Talon Candidate – 2024-132  - Strategic IP Executive

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Experience

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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