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Talon Candidate – 2024-132  - Strategic IP Executive


Multinational Medical Diagnostic Company (Vice President, Intellectual Property, July 2022 – current)

  • Global head of intellectual property

  • Developing and executing global IP strategy (molbio, chem, E&E, software).

  • Managing global patent and trademark portfolios through outside counsel.

  • Developing IP litigation strategy and managing IP litigations through outside counsel.

  • Responsible for all IP provisions in all transactional matters across the Group.

  • Providing IP counseling to Group’s stakeholders and C suite. Designing and implementing strategic changes with respect to IP capabilities within the global organization.


Global Pharmaceutical Company  (Senior Corporate Counsel–IP, January 2018 – July 2022)

  • Main focus: biologic drug products (e.g., gene therapy, antibodies, PEG/PK enhanced proteins, cell therapy) and ASOs (including manufacturing processes).

  • Managing/preparing worldwide exclusivity and freedom-to-operate strategy re the same.

  • Managing worldwide patent preparation and prosecution by outside counsel re the same.

  • Leading IP due diligence activities for M&A and in-licensing opportunities re the same.

  • Providing transactional team with strategic IP guidance; being lead IP attorney in in-/out-licensing negotiations.

  • Providing strategic IP counseling and general counseling to R&D organization.

  • Worldwide opposing third party patents, defending against challenges, appealing adverse patent office decisions.


Leading US IP Law Firms  (2010-2018)

  • Drafted/pros. patent applications re bioinformatics/genomics, new therapeutic uses of known drugs

  • Drafted opinions re patents in the biologics manufacturing space.Conducted due diligence projects re dendritic cell-based immuno-therapy, vaccines, ES cells and other subjects.

  • Drafted/prosecuted patent applications re genome engineering, antibodies, diagnostic tests, virus purification, transgenic mice and medical devices (lab-on-a-chip).

  • Oversaw patent prosecution/FTO work by junior associates.

  • Conducted due diligence projects in the CAR T cell therapy space and opinion work re genomic assays.

  • Drafted and prosecuted (US/foreign) patent applications re antibodies, fusion-proteins, antibody libraries, enzymes and small molecule drugs, as well as production methods for biologics.

  • Managed (US/foreign) patent docket of, and drafted applications for, US Fortune 100 chemical company.

  • Drafted 60+ non-infringement/invalidity opinions re small molecule drugs in various therapeutic areas.

  • Conducted 30+ high-stakes due diligence projects on behalf of investment/pharmaceutical companies.

  • Participated in various lit. and prov. litigation support (drafted infr. contentions, expert reports etc.).

  • Provided general counseling to clients across the entire spectrum of patent law.

Education - JD., 2009 // Ph.D., Molecular Biology, 1999 // BS Biology, 1995

Thank you for your time and interest.

If you're interested in learning more about this candidate or discussing how we can assist you in the hiring process, please don't hesitate to contact me.

Thomas Stephan: 612.282.8764

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