Patent

Analyzed the ribonucleic acid/lipid nanoparticle (RNA/LNP) landscape to assess the IP positions of major companies in the field and to identify potential companies for partnering or acquisition.

Assisted multiple clients in obtaining patents for computer-implemented inventions, which have traditionally posed difficulties in prosecution before the European Patent Office.

Provided counseling and creative solutions regarding prosecution strategy related to a COVID-19 vaccine patent application in view of various business agreements with a research institution and attendant Bayh-Dole considerations to promote business development.

Developed and grew intellectual property portfolio for startup company in the cybersecurity space. Identified key values for the company and prepared and prosecuted patents protecting and building on the value for the client. Obtained the first patent for the company within one year of receiving disclosure to help startup quickly obtain funding and continue strategic growth.

Advised large international company on prior art analyses and product developments for launches in very crowded technology fields. Directly interacted with engineers to ensure that the products were protected and the client’s risk was understood and minimized.

Performed IP due diligence and authored multiple noninfringement and invalidity opinions to position a small life sciences company developing and marketing biological wound healing materials for a possible IPO and eventual acquisition for $300 million, plus an additional $100 million upon reaching certain growth milestones.

Successfully defended game-changing agricultural equipment patents before the USPTO during reexamination related to a pending infringement suit in which the major manufacturer is the plaintiff.

Won an administrative appeal for a global technology company before the U.S. Patent Trial and Appeal Board in a case involving a patent application that sought to protect a method of predicting a consumer’s future purchases, based on previous transaction card purchases indicating that a “life event” had recently occurred for the consumer.  The United States Patent and Trademark Office had rejected the application as directed to an abstract idea under a 2014 Supreme Court case.  In its decision in favor of the client, the Appeal Board held that any abstract idea was integrated into a practical application because the patent claims “improve the underlying consumer behavior prediction technology.”

Developed and executed patent filing strategy and managed diverse patent portfolio for a large university client. Technologies span various subject areas including pharmaceuticals, life sciences and medical fields.

Developed and executed patent filing strategy and managed diverse patent portfolio for a large university client. Technologies span various subject areas including science, engineering and medical fields.

Evaluated and drafted IP licensing agreements, research and collaboration agreements and material transfer agreements for a large U.S. university.

Developed and executed patent filing strategy resulting in patent family that was central to multimillion-dollar acquisition by large, publicly traded fluidics systems and specialty engineered products company.

Filed the first ever patent applications for a university client. Worked with the university to create and implement internal intellectual property procedures for the client.

Prepared various IP-related agreements including licenses, commercialization and joint development agreements, enabling client to successfully enter into partnerships with third parties.