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Emer Simic


Neal Gerber Eisenberg

Emer Simic is a partner in the Intellectual Property practice group at Neal Gerber Eisenberg. A registered patent attorney, she is an accomplished litigator with substantial experience successfully representing both patent challengers and patent owners in Hatch-Waxman and patent infringement matters before the U.S. District Court and the Patent Trial and Appeal Board (PTAB).

With a science degree from Cambridge University, Emer possesses a keen understanding of the pharmaceutical, chemical, and biotech fields. She focuses her practice on client counseling and patent litigation in the life sciences space, with a particular focus on pharmaceuticals.

Emer prides herself on building strong relationships with clients to assist them in decision making to support their business objectives. Clients rely on Emer’s ability to apply her knowledge of science and the law to develop and defend their intellectual property throughout its life cycle. She collaborates with research and development teams to maximize the value of new product and line extension efforts and deftly navigate freedom to operate issues.

Emer is always prepared to vigorously advocate for her clients at trial should the need arise. She has extensive experience managing complex pharmaceutical patent disputes before the U.S. District Court and on appeal to the Federal Circuit, including management of parallel inter partes review (IPR) proceedings.

Originally from Ireland, Emer is a qualified barrister. Prior to joining the firm, Emer was a partner at Green, Griffith & Borg-Breen LLP. She is highly lauded for her legal acumen. In 2020, she was chosen as one of the top “40 Under 40 Illinois Attorneys to Watch” by the Chicago Daily Law Bulletin, honored as one of “Chicago’s Notable Women Lawyers” by Crain’s Custom Media and named an “IP Star” by Managing IP. Emer is a member of the firm’s Women’s Network.

Recent Articles by Emer Simic

What Vidal’s Sua Sponte Director Review of Unprecedented PTAB Sanctions Order Could Mean for PTAB Practice

If a sanctions order is the stuff of a Patent Trial and Appeal Board (PTAB) practitioner’s bad dreams, then the issuance of sanctions outright cancelling a client’s patent(s) qualifies as their worst nightmare. That nightmare happened to Longhorn Vaccine (“Longhorn”) in April of this year, when the PTAB canceled five  of its patents as sanctions for Longhorn’s violation of the duty of candor relating to withholding test data that the PTAB deemed relevant to the patentability of the challenged claims. A month later, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal sua sponte ordered Director Review of PTAB’s sanctions order. We now await her decision. This article examines the PTAB’s unprecedented sanctions order in the context of Director Vidal’s recent crackdown on inter partes review (IPR) abuses and provides guidance as to what practitioners can do now to avoid accusations of misconduct before the PTAB.

USPTO Guidance Reduces PTAB Discretionary Denials, Signaling Potential Uptick of IPRs in 2023

The appointment of USPTO Director Kathi Vidal in April 2022 and her introduction of interim guidance in June 2022 has spurred changes at the Patent Trial and Appeal Board (PTAB) that may result in an increase in instituted inter partes reviews (IPRs) due to a dramatic decline in discretionary denials. Under the reign of former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, the number of discretionary denials of IPR petitions had steadily increased over the last five years, in part due to the application of the PTAB’s 2020 precedential decision in Apple Inc. v. Fintiv, Inc.

Past Events with Emer Simic

Life Sciences Masters™ 2022

October 25-26, 2022