Counsel for Biotechnology Company
Primary outside counsel for a Michigan based biotechnology company in the area of medicinal chemistry.
Served as primary attorney for a client with respect to negotiating and drafting of licensing agreements, including computer software, and trademark and copyright applications and issues.
Patent Filed in Medical Instrument Industry
Assisted a client in the medical instrument industry with obtaining a U.S. patent. Prior to filing and obtaining a U.S. patent for the client, a detailed patentability search was performed to identify any existing art in the space. Based upon the search results, we were able to advise the client on a strategy for drafting the application, which ultimately resulted in an allowance by the USPTO.
Freedom to Operate Search for Client in Medical Instrument Industry Assists Client in Managing Risks
Performed a freedom to operate search for a client in the medical instrument industry related to development of a new product. We presented the results to the client which included a list of features currently protected by active patents, as well as features previously disclosed that are now in the public domain. The information provided assisted the client in managing risks as they moved forward with development of the product.
Lead Counsel in Trademark Matters for Worldwide Leader in Diving and Safari Excursion Travel Industry
Lead counsel in prosecuting USPTO and U.S. Trademark Trial and Appellate Board proceedings that protect a global family of trademarks on behalf of a worldwide leader in the diving and safari excursion travel industry.
Patent Wins Invention of the Year
Prepared and filed over 50 patent applications for an automotive OEM for an electronically controlled automatic transmission. One of these patent applications produced the patent that won invention of the year in 1990 by the Intellectual Property Organization.
Patent Applications Filed for Automotive OEM for a Hybrid Vehicle
Managed a team of attorneys that prepared and filed over 50 patent applications for a hybrid vehicle for an automotive OEM. Under this leadership, the team obtained the disclosures from a contract supplier, drafted the patent applications, and filed them all on the same day.
Medical Device Patents
Achieved favorable settlement for Biomet in a 15-patent declaratory judgment action after Indiana federal judge allowed Biomet’s claims of inequitable conduct into the case.