Matthew E. Martin

Partner

Overview

Matt Martin is a partner and intellectual property lawyer with Foley & Lardner LLP, where he counsels clients on IP issues with a focus on strategic patent procurement and intellectual property portfolio management, particularly in the manufacturing and consumer products industries. He has experience in a range of technical areas, especially as relates to consumer goods and fabrication. In particular, Mr. Martin has handled intellectual property matters relating to mechanical and electro-mechanical plumbing fixtures, house wares, medical devices, food products, financial products, optics and lighting, coating compositions, micro fabrication, radiation detection, computer memory, and semiconductors. Mr. Martin is the vice chair of the firm's Mechanical & Electromechanical Technologies Practice, as well as a member of the firm's IP Litigation Practice and Energy Industry Team.

Patent Procurement

Mr. Martin counsels clients on strategic patent procurement, both domestic and foreign, with a focus on matching a patent strategy to the client’s business goals. His experience in patent procurement includes:

  • Utility patents 
  • Design patents 
  • Patentability analysis 
  • Post-Grant Proceedings, including reexamination and reissue 
  • Foreign patent applications, including PCT, Utility, Design, and Utility Model

Portfolio Management

Mr. Martin also advises clients on general intellectual property issues, including in-bound and out-bound management of patent portfolios. Mr. Martin’s experience in portfolio management includes:

  • Design-around product development analysis 
  • IP due diligence in corporate transactions, including mergers, IPOs, and acquisitions 
  • IP related agreements, including joint venture, supply, licensing, and consultant agreements 
  • Patent rights under Bayh-Dole 
  • In-bound and out-bound licensing

Patent Risk Management

In addition, patent risk management is also a significant portion of Mr. Martin’s work. He works with clients to manage risks posed by third party patent rights, including through the use of freedom-to-operate analysis, third party preissuance submissions, post-grant proceedings, opinions, and licensing.

Transactional Matters

Mr. Martin has also worked on numerous transactional projects for clients, ranging from initial public offerings to acquisitions of privately held companies. A representative sample of Mr. Martin’s work includes:

  • IP due diligence for the acquisition of a privately held consumer goods company 
  • Serving as the lead for all IP due diligence for an initial public offering for a technology company in the medical device area 
  • Managing the acquisition of a privately held farm equipment and manufacturing company 
  • Managing the acquisition of a privately held food processing company 
  • IP due diligence for a joint venture for a medical device company 
  • IP due diligence for the purchase of several privately held software companies by a large medical insurance company 
  • Evaluation of an clean-tech startup for acquisition by a privately held manufacturing company 
  • Assisting an investment bank with Illinois utility regulations regarding the restructuring of certain “clean” power generation assets

Recognition

In 2012 - 2016, Mr. Martin was named to the list of Illinois Super Lawyers – Rising Stars®. The Rising Stars® list represents the top 2.5 percent of lawyers under 40 years old in Illinois based upon a survey of Mr. Martin’s peers.*

Education

Mr. Martin received his J.D., magna cum laude, from The John Marshall Law School, where he attended as a Distinguished Scholar, was a member of Law Review, and was editor-in-chief of the Review of Intellectual Property Law. He earned a B.S. from Purdue University.

Previously, Mr. Martin worked as a law clerk at an international automotive company. In addition, Mr. Martin served as a judicial extern to Hon. Robert Gettleman of the Northern District of Illinois.

Admissions

Mr. Martin is admitted to practice in Illinois and before the U.S. Patent and Trademark Office.

*The Illinois Supreme Court does not recognize certifications of specialties in the practice of law and no certificate, award or recognition is a requirement to practice law in Illinois.

Representative Matters

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Provided substantial patent counseling and procurement for a leading university in the Northeast directed to nanotech science and engineering for method and apparati for gene sorting, biological tissue examination, and characterization of bio-materials. The technology is licensed to several very large Fortune 500 companies and has enabled characterization and separation of biomaterials at the nanotech level which was not previously possible. Also handled work for this university in high-performance magnetic switching technology and clinical treatment and monitoring devices for neural and human brain physiology.
Obtained a large portfolio of patents for a company specializing in large solar power plants. Recently obtained a series of patents in foreign countries, including China, which solidified the company's protection and helped to establish dominance in their market niche.
Represented a growing technology company that completed a third round of venture financing based predominantly on the extensive worldwide patent portfolio that the firm prosecuted. The technology concerns submicron-size quality assurance examination and processing of semiconductor wafers and integrated circuits. The technology originated at a major university and Foley guided the company from a one-man start-up to its current position with about 50 employees and a well-developed product being utilized by major semiconductor companies and protected by the worldwide patent portfolio.