Marc works with clients to develop and implement effective intellectual property strategies and is recognized as one of San Diego’s top IP attorneys. In addition to obtaining and managing patent portfolios, he handles licensing and other IP-related transactions as well as the requisite due diligence.
Marc provides strategic patent and trademark counseling, manages and prosecutes complex IP portfolios, and advises and counsels diverse clients ranging from early stage to established technology focused companies, research institutions, and venture capital and investment companies. He works with clients across a variety of industries, particularly the pharmaceuticals, biotechnology, medical devices, clean technology, and the mechanical and action sports sectors. His experience encompasses pharmaceuticals, biologics, drug-device combinations, industrial biotechnology, assisted reproductive technology and stem cells, immunology, molecular biology and molecular research tools, chemical engineering, software, mechanical devices, and action sports innovation.
Prior to joining the firm, Marc was a partner in the San Diego office of another large law firm. He also worked for a California-based biopharmaceutical company, where he was involved in the development and optimization of recombinant protein expression systems, protein purification and recovery methods, process scale-up, and process computer automation.
Outside of his legal practice, Marc is active in the legal community having served as the President of the San Diego Intellectual Property Law Association, and as the chair of the IP section of the San Diego County Bar Association. Marc also taught patent law at the University of San Diego School of Law as an adjunct professor and taught patent prosecution and biotechnology patent law at UC San Diego.
Before graduating from law school, Marc was a summer law clerk for the US Senate Judiciary Committee, and worked on legislative projects including the Omnibus Patent Reform Act of 1997, the Digital Millennium Copyright Act, and the Database Piracy Act. In addition, he served as a judicial extern to the Honorable D. Lowell Jensen of the US District Court for the Northern District of California.
viewpoints
Reduced Scope of March-in Rights Under Bayh Dole Rules Revisions
June 16, 2021 | Blog | By Marc Morley
Rise of the Improper Markush Grouping Rejection and Biomolecules
November 18, 2020 | Blog | By Marc Morley
Federal Circuit Narrows Availability for IPR Appeals Under Arthrex
May 14, 2020 | Blog | By Marc Morley
Update on Federal Register Notice on Artificial Intelligence (AI) Patent Issues
January 21, 2020 | Blog | By Michael Renaud, Marc Morley
Year in Review: The Most Popular IP Posts of 2019
January 6, 2020 | Blog | By Christina Sperry
Recap of Federal Register Notice on Artificial Intelligence (AI) Patent Issues
September 17, 2019 | Blog | By Marc Morley, Michael Renaud
Give and Take: IPR of Pre-AIA Patent is NOT an Unconstitutional Taking
August 9, 2019 | Blog | By Marc Morley
Effect of Prosecution History Estoppel on Infringement Claim under Doctrine of Equivalents
August 9, 2019 | Blog | By Marc Morley
Representations Made by a Patentee during Foreign Prosecution May Be Used in Claim Construction for U.S. Patents
July 22, 2019 | Blog | By Marc Morley, Melissa Brayman
Director Iancu Roundtable with BIOCOM San Diego
May 20, 2019 | Blog | By Marc Morley, Melissa Brayman
News & Press
The Best Lawyers in America 2025 Recognizes 184 Mintz Attorneys across 56 Practice Areas
August 15, 2024
187 Mintz attorneys have been recognized by Best Lawyers® in the 2025 edition of The Best Lawyers in America©. Notably, three Mintz attorneys received 2025 “Lawyer of the Year” awards, and 64 firm attorneys were included in the 2025 edition of Best Lawyers: Ones to Watch.
Can an AI System Be Given a Patent?
October 11, 2019
Mintz Snags Ex-Foley IP Partner In San Diego
October 18, 2017
Mintz Continues Expansion of National Intellectual Property Practice with Addition of Marc Morley
October 16, 2017
Recognition & Awards
IAM Patent 1000: The World’s Leading Patent Professionals (2015 – 2016)
The Legal 500: Recognized for Health Care: Life Sciences and for Patent Licensing and Transactional (2014)
San Diego Daily Transcript: Top Intellectual Property Attorneys (2012)
San Diego Daily Transcript: Top Young Attorneys (2007)
Best Lawyers in America, Patent Law (2025)
Involvement
- Past President, San Diego Intellectual Property Law Association
- Past Co-Chair of the Intellectual Property Section, San Diego County Bar Association
- Adjunct Professor of Patent Law, University of San Diego School of Law (2006 – 2013)
- Instructor of Biotechnology Patent Law, University of California, San Diego (2008 – 2015)