Marilyn J. Chimes, Counsel
Dr. Chimes brings an unusual combination of experiences to the practice of law. A Doctor of Veterinary Medicine, as well as a Diplomate of the American College of Laboratory Animal Medicine, she has used her medical and pharmaceutical company experience in such areas as litigation, risk management and risk counseling, analysis of license and contract agreements, the development of medical, pharmaceutical and biotech products and other health-related engagements.
Dr. Chimes has had hands-on experience in pre-clinical drug safety evaluation, protocol design, report drafting and review, and a range of design, analysis and writing in the area of biomedical research. She is also registered to practice before the United States Patent and Trademark Office.
Dr. Chimes has experience in intellectual property law, including infringement and validity opinions, licensing, contracts, litigation, and some patent and trademark prosecution. She has advised clients on the development, protection, marketing, and defense of intellectual property. She also has extensive experience in health care law, including negotiation and drafting of corporate documents, agreements, policies, and procedures. Her clients have been primarily pharmaceutical, medical device, and health care companies, and groups of health care professionals. In addition, Dr. Chimes has represented closely held corporations and high net worth individuals in corporate and commercial matters, estate planning, and real estate transactions.
Dr. Chimes worked in the health law and intellectual property law groups of Jenner & Block, LLP from 1999 to 2006.
Professional Activities:
AWARDS:
- Recognition Award for Continuing Education, American Society of Laboratory Animal Practitioners, 1994
Other:
- 2005-2006 HIPAA Compliance Team, Jenner & Block LLP
- 2005- Public Relations Committee, American Veterinary Medical Law Association
- 2003-06 Vice President, Board of Directors, Tree House Animal Foundation, Inc., Chicago, Illinois
- 2001-2006 Board of Directors, Tree House Animal Foundation, Inc.
- American College of Laboratory Animal Medicine (Diplomate)
- American Society of Laboratory Animal Practitioners
- Association of Primate Veterinarians
- American Association for Laboratory Animal Science
- American Veterinary Medical Association
Service to the Bar:
- American Bar Association
- Illinois State Bar Association
- Chicago Bar Association
- American Intellectual Property Law Association
- American Veterinary Medical Law Association (charter member)
Representative Engagements:
Health Law
- Advised pharmaceutical, medical device, pharmacy, veterinary, medical association, hospital, and charitable organization clients about a wide variety of issues at the intersection of law and medicine
- Counseled clients regarding regulations relevant to pharmaceutical compounds, medical devices, pharmacies, nursing facilities, animal shelters, veterinary practice, and personal health information in connection with various types of activities, events, and issues
- Assisted clients in compliance with FDA regulations and HIPAA regulations
Drafted HIPAA policies, procedures, and authorizations, as well as business associate and data use agreements- Counseled client on Japanese medical device laws and regulations before and after major revisions
- Negotiated business associate agreements for use with national outcomes database having hundreds of healthcare facility participants
- Pharmaceutical and medical litigation, including litigation related to drugs, vaccines, drug-eluting coronary stents, Medicare/Medicaid fraud, advertising, and organ transplants
- Counseled clients in various situations likely to lead to litigation
Intellectual Property Law
- Prepared infringement and validity opinions relating to, among other things, patents for various technologies, including methods of medical treatment and drug delivery, blood glucose monitors, drugs, chemical enantiomers, beverages, nutritional supplements, methanol to olefin conversion, mattresses, bumper beams, fuel modules, mechanical seals, pulse welding machines
- Drafted and reviewed agreements relating to intellectual property, including agreements for licenses, nondisclosure of confidential information, services, supplies, distribution, research and development, marketing, joint litigation defense, and settlement of litigation
- Counseled pharmaceutical and medical device company clients on creation and dissolution of joint ventures for product development and marketing
Counseled clients on patent strategies- Advised clients on licensing negotiation and litigation strategies
- Prepared trademark registrability and infringement opinions
- Prosecuted applications for trademarks and service marks, including preparation of applications, responding to office actions, and advising clients
- Worked with foreign associates to prosecute and assign trademarks and patents worldwide
- Advised certifying organizations on licensing, enforcement, and liability issues with certification marks
- Obtained copyright registrations
- Advised clients on listing of patents in FDA Orange Book
- Performed due diligence reviews and advised clients regarding intellectual property rights in connection with financing, acquisition, merger, and restructuring transactions
- Worked on prosecution of patent applications relating to medical reference systems, diabetic health monitoring methods, treatment systems for amblyopia, intraocular lenses, saddletrees, and fuel filters
- Advised clients regarding various legal and business issues relating to patents, trademarks, and copyrights
- Litigation involving disputes over intellectual property relating to biomarkers, canola oil, plastic packaging, light bulbs, a movie, and more
Corporate Law
- Formed, maintained, merged, and dissolved for-profit and not-for-profit corporations and limited liability companies
- Drafted organizational documents for the international charitable work of a religious group
- Drafted contracts and service agreements for matters of research and development, employment, real estate purchases and sales, leases, publishing, and credit card payment processing
- Prepared assignments of shareholder and partnership interests
- Drafted and advised clients regarding letters to shareholders and donors
- Counseled corporate and association clients on various matters including healthcare related regulations, exports, officer compensation, product liability, employment, employee benefits, real estate, intellectual property, tax, accumulated earnings, contracts, insurance, security, voting, bylaws, public relations
- Served as vice president of the board of directors of a not-for-profit humane organization with annual operating expenses over $1 million and over 40 employees
Publications:
M.J. Chimes, Response to Protocol Review Scenario: Violators beware!, 36(8) LAB ANIMAL 13 (Sept. 2007)
M.J. Chimes, L.B. Ergin, & K.A. Donohue, Confidential and Proprietary Information, in J. Silverman et al. eds., The IACUC Handbook 407 (CRC Press, 2nd ed. 2007)
M.J. Chimes, Medical Corporations, in Business Entities and Corporate Law in Illinois (Matthew Bender, 2006)
M.J. Chimes, S.A. Scharf, & L.T. Spacapan, Introduction, in The Use of Toxicology in Tort Litigation: A Survey of Federal and State Jurisdictions (Am. Bar Ass’n 2005)
M.J. Chimes, Corporate Responsibility and Corporate Compliance: A Resource for Health Care Boards of Directors, Health Law Briefs (Jenner & Block, Chicago, Ill.), Fall 2003, at 3
M.J. Chimes, HHS Issues Interim Final Rule Requiring Electronic Submission of Medicare Claims, Health Law Briefs (Jenner & Block, Chicago, Ill.), Fall 2003, at 12
