News
Jane S. Berman
- E jberman@taftlaw.com
- T (312) 840-4333
- F (312) 966-8552
Summary
Jane concentrates her practice in patent prosecution and Hatch-Waxman ANDA litigation matters.
Patent Litigation
Jane’s work has included litigation to help bring to market generic versions of a number of brand name drugs. Her work has included Hatch-Waxman opinion work and litigation in federal court and U.S. Patent Trial and Appeal Board (PTAB) matters concerning drugs such as ANGIOMAX (bivalirudin), DALIRESP (roflumilast), FANAPT (iloperidone), JEVTANA KIT (cabazitaxel), KYPROLIS (carfilzomib), LASTACAFT (alcaftadine), LEXIVA (fosamprenavir calcium), SAMSCA (tolvaptan), TEFLARO (ceftaroline fosamil), and XARELTO (rivaroxaban). She has represented parties in inter partes reviews instituted by the PTAB in fields including pharmaceuticals and telecommunications. Jane co-authored a chapter in the second edition of ANDA Litigation: Strategies & Tactics for Pharmaceutical Patent Litigators published in 2016.
IP Counseling and Prosecution
Jane has many years’ experience in prosecuting protections for all types of intellectual property, including patents, trade secrets, trademarks and copyrights. Jane manages international patent and trademark portfolios and is experienced in using the Patent Cooperation Treaty, Madrid Protocol and other international legal tools to obtain patents and trademark registrations for her clients in the U.S. and abroad. Her broad international prosecution experience includes obtaining dozens of patents on improved medical devices, thermoplastic compositions, optical modulators and other optoelectronic devices, mining equipment, smelting furnaces, calcination and smelting processes, and internal combustion engines.
IP Transactional Experience
Jane’s extensive work at banking firms has honed her abilities in advising on the intellectual property aspects of complex corporate and financial transactions, including many significant corporate acquisitions and licensing transactions. She has years of experience in advising major international banking institutions on the IP aspects of commercial lending transactions. She frequently provides opinions on strength of patent portfolios that affect decisions on private equity, lending, and restructuring deals.
All Service Areas
All Practices
Education
- University of Illinois College of Law (1987)
- University of Illinois (1984)
with honors
B.S. – Agriculture
Admissions
- State - Illinois
- Federal - Northern District of Illinois
- Federal - United States Patent and Trademark Office
Speeches and Publications
- “Lodestar v. Bacardi has Implications for Protection of US Marks Under Madrid Protocol,” World Trademark Review Weekly, May 5, 2022.
- Speaker, “The Basics of Intellectual Property,” femmebought Live Virtual Workshop, Feb. 10, 2022.
- “TTAB ponder trademarks that reference fictional places,” World Trademark Review Weekly, Nov. 4, 2021.
- “Offense and Defense in Intellectual Property: the Most Common Issues Confronting Small Businesses,” Docket, the magazine of the Lake County Bar Association, April 2020.
News
Taft Acts as Legal Counsel to Right Lane Industries in Acquisition News
Berman Authors Article on IP Protection for Small Businesses Law Bulletins
Lodestar v. Bacardi Has Implications for Protection of US Marks Under Madrid Protocol News
Berman to Speak on the Basics of Intellectual Property at Virtual Workshop
Past Events
Professional Affiliations
- Intellectual Property Law Association of Chicago
Member
- International Trademark Association
Member
- Illinois State Bar Association
Member
- American Bar Association
Member
- Gamma Sigma Delta Honorary Society
Member
- Lake County Bar Association
Member
- ChIPs Network
Member
Community Involvement
- Alpha Zeta Scholastic Honorary Society
Member
- Village of Buffalo Grove 50th Anniversary Committee
Member
- Vernon Area Public Library District
Member, Board of Trustees
Chair, Personnel Committee
Former President
Former Vice President
Former Secretary - Stevenson High School Band and Chorus Parent Groups
Member, Board of Directors
Secretary