Representative Work – Patent Procurement and Development
- Prepared and prosecuted patent applications from inception to issuance, primarily in chemical, pharmaceutical and diagnostic technologies, including small molecule compound, pharmaceutical formulation, treatment methods, second medical use, and kit claims.
- Drafted freedom-to-operate/clearance and patentability opinions.
- Supervised international patent prosecution and recommended portfolio development strategies for US and foreign patent applications.
- Counseled clients to identify and develop their IP, including managing budgets.
- Clients have included multinational pharmaceutical corporations, national laboratories, and universities, as well as renewable feedstock, medical device and packaging companies.
Representative Work – Post-Grant and Patent/Portfolio Analysis
- Identified relevant art and contributed to patent invalidity analysis for a successful European patent opposition proceeding.
- Provided technical support for patent litigation matters.
- Member of a team that provided critical analyses of patent prosecution histories in view of recent caselaw to evaluate potential post-grant review outcomes.
- Evaluated patent portfolios and identified patentability obstacles for due diligence.