Paul S. Tully

, Ph.D.

Overview

Paul S. Tully is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Litigation & Appeals Practice Group. Dr. Tully’s practice includes all aspects of patent litigation, branded/ANDA litigation, due diligence, patent licensing and negotiations, IPO and venture capital due diligence related to intellectual property, patent preparation and prosecution, opinion preparation, preparation and evaluation of secrecy agreements, freedom-to-operate studies, and client counseling. His technology experience includes pharmaceuticals, organic/organometallic chemistry, process chemistry, medicinal chemistry, biotechnology, biologics, medical devices, diagnostics, catalysts, and polymer technology. Dr. Tully has extensive litigation experience, including first and second chair representations, across a wide range of technology areas, from discovery through trial/settlement and appeal.

Prior to joining MBHB, Dr. Tully was a senior organic research chemist, a patent agent, and corporate intellectual property counsel in the chemical industry.

Education
  • Ph.D., Northwestern University,

    Synthetic Organic Chemistry, Gamma Sigma Epsilon; Thesis: The Organic Chemistry of Novel Nickel Pi-Allyl Complexes: Applications to The Synthesis of Prostaglandins

  • M.S., Northwestern University,

    Organic Chemistry

  • B.S., Eastern Illinois University,

    Organic Chemistry; Undergraduate Research: Dyotropic Rearrangement of Cycloalkyl b-Lactones. Formation of Spiro- vs. Fused-Butyrolactones as a Function of Ring Size

  • J.D., The John Marshall Law School,

    Cum Laude, Order of John Marshall; The John Marshall Law Review; The American Society of Writers on Legal Subjects Scribes Award; Corpus Juris Secundum Award – Property; CALI Excellence For The Future Award – Property

Bar Admissions
  • Illinois
  • Wisconsin
  • U.S. Patent & Trademark Office
Memberships
  • American Intellectual Property Law Association
  • Intellectual Property Owners Association
    • Past Vice Chair and Standing Committee Member, Counterfeiting and Piracy Committee
  • American Chemical Society
  • Licensing Executives Society
  • American Oil Chemists’ Society

Recognition

  • Illinois Super Lawyers Rising Star
  • American Conference Institute – Pharmaceutical Expert Speaker
  • AOCS – Expert Speaker
  • TTS – Expert Speaker/Panelist

Published Articles

“The America Invents Act: Groundbreaking US patent law changes are here,”  AOCS INFORM, November/December 2012.