Brian Gildea Email and Phone Number
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I have more than twenty years of experience as an intellectual property attorney focusing on patent, trademark and trade secret matters in the areas of chemistry, biotechnology, life science, pharmaceuticals, pathogen detection, mass spectrometry, diagnostic assays and most recently, gene editing. As a member of the management team of two start-up companies that have had successful exit transactions, I have a proven ability to create strategic global intellectual property portfolios that build the foundation of successful, competitive hi-tech businesses. As an inventor on numerous United States and foreign patents, as well as a co-author of various scientific papers, I am also an accomplished scientist. In my practice of intellectual property law, I strive to use my unique skill set to provide my clients with comprehensive protection of their intellectual property and thus a more competitive position in the global marketplace.Specialties: Intellectual Property Law: Chemistry, Biotechnology, Life Science, Pathogen Detection and Pharmaceutical patent filing & prosecution. Freedom to operate and other opinion work. Intellectual property licensing. United States and Madrid Protocol (international) trademark filing & prosecution.
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Senior Ip CounselStealth Biotherapeutics Apr 2019 - PresentNeedham, Massachusetts, Us -
Senior Ip Counsel & Director Of Chemistry StrategyTrucode Gene Repair, Inc. (Formerly Pna Innovations, Inc.) Feb 2017 - Mar 2019Member of the leadership team and responsible for the company’s intellectual property portfolio, including: (i) coordinating with management and outside counsel to create and implement the company’s intellectual property strategy, (ii) managing interactions with the company’s university licensors, (iii) preparing and filing patent applications directed to company inventions or, as appropriate, supervise outside counsel with respect to such matters, (iv) drafting and negotiating confidentiality, supply, services and other legal agreements, (v) improving upon aspects of the company’s chemistry platform, and (vi) preparing and executing a monthly/quarterly/yearly legal budget.
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General And Intellectual Property CounselPna Innovations, Inc. Jul 2015 - Feb 2017Member of the executive staff and responsible for all aspects of the company’s legal requirements, including: (i) assisting the CEO and SVP of Research with all company business matters, including preparation for all board of director meetings, (ii) participating in negotiations, due diligence and document review related to the venture capital backed merger with Trucode Gene Repair, Inc. in February, 2017, (iii) delegating responsibility to outside counsel (e.g. for matters such as securities transactions), when appropriate, as well as managing the completion of that work, and (iv) transitioning the company from its roots at Carnegie Mellon University in Pittsburgh to its industrial operations in Woburn, MA in mid-2015.
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Executive Director, Intellectual Property & LicensingBoston University Jul 2010 - Jun 2015Boston, Ma, UsMember of the BU-OTD management team and responsible for the university’s patent portfolio, including: (i) managing a team that handled the entire university patent portfolio (filings, prosecution and maintenance) and all related transactions (e.g. intellectual property licenses, inter-institutional agreements, confidential disclosure agreements, material transfer agreements, option agreements, letters of intent and memorandums of understanding), (ii) working collaboratively with the business development group to identify high value intellectual property as well as advise on licensing terms and deal structure, (iii) supervising outside counsel charged with enforcement of US 5,686,738 that resulted in a jury verdict of over $13M for Boston University, (iv) managing the successful mediation of the proper payment of royalties under a license agreement that resulted in a large pay out to Boston University, (v) educating faculty and students about good intellectual property practices, and (vi) resolving inventorship disputes between faculty members, students and/or other institutions. -
OwnerBrian D. Gildea, P.C. Aug 2007 - Jun 2015Counseled clients in the life science, diagnostic and pharmaceutical industries on all aspects of patent, trademark and trade secret law, including: (i) drafting, filing and prosecuting United States and Patent Cooperation Treaty (PCT) patent applications related to chemicals, pharmaceuticals and diagnostic assays, (ii) filing and prosecuting United States & Madrid Protocol trademark applications, (iii) providing validity, infringement and freedom to operate opinions to clients, and (iv) performing patent search and patent landscape analysis for clients.
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Senior AttorneyApplera Corporation Nov 2001 - Jul 2007Waltham, Ma, UsMember of the Applera Corporation legal team and responsible for chemistry centric patents and intellectual property, including: (i) drafting, filing and prosecuting United States and PCT patent applications primarily in the areas of biotechnology, nucleic acid chemistry, peptide chemistry, surface chemistry, pathogen detection, fluorescent dyes for nucleic acid analysis and isobaric tags for mass spectrometry identification and quantification, (ii) appealing rejections before the Board of Patent Appeals and Interferences (BPAI), (iii) drafting and negotiating license and settlement agreements, (iv) managing an arbitration case in Europe related to a patent license agreement, (v) managing an opposition proceeding in the European Patent Office, (vi) advising company management on intellectual property law with respect to the mass spectrometry and cell biology businesses, (vii) evaluating patents for validity, infringement and/or freedom to operate issues, (viii) delegating patent drafting and other intellectual property related assignments to outside counsel, as needed, as well as managed the completion of that work, (ix) performing legal review of various documents prior to publication, and (x) mentoring members of the company’s patent practice group. -
Co-Founder, General Counsel And Corporate SecretaryBoston Probes, Inc. Jan 1999 - Oct 2001Member of the executive staff and responsible for all aspects of the company’s legal needs, including: (i) creating and implementing the company’s intellectual property strategy, (ii) preparing and executing legal budgets, (iii) delegating responsibility to outside counsel, when appropriate, as well as managed the completion of that work, (iv) participating in due diligence and related negotiations for the:- Acquisition of a Danish biotechnology company by Boston Probes’ parent company, Dako A/S, in April, 1999- Cross license with, and minority investment by, Applied Biosystems in May, 2000- Acquisition of Boston Probes by Applied Biosystems in November, 2001, (v) managing a legal assistant, and (vi) performing the duties of Patent Attorney as listed below.
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Patent AttorneyBoston Probes, Inc. Dec 1996 - Oct 2001Responsible for Boston Probes’ intellectual property portfolio, including: (i) drafting, filing and prosecuting United States and Patent Cooperation Treaty patent applications pertaining to small molecule chemical linkers, pathogen detection, labeled biopolymers, polymerase chain reaction (PCR) assays and other diagnostic assays, (ii) filing United States trademark applications, (iii) drafting and negotiating intellectual property license agreements, (iv) managing the completion of infringement, validity and/or freedom to operate opinions by outside counsel, and (v) Counseling scientists on practices that facilitated the disclosure and protection of company’s intellectual property.
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Director Of ChemistryBoston Probes, Inc. Mar 1996 - Oct 2001Responsible for: (i) establishing and managing a chemistry group that produced peptide nucleic acid (PNA) probes required for internal and external collaborator’s use, (ii) implementing the company’s quality systems for manufacturing PNA probes, and (iii) designing and preparing chemical linkers and small molecule labeling reagents used to label probes and other biomolecules as well as producing the labeled PNAs, nucleic acids, peptides and proteins/enzymes.
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Manager Of The Office Of Intellectual PropertyPerseptive Biosystems, Inc. (Successor To Milligen/Biosearch Division Of Millipore) Aug 1994 - Sep 1995Responsible for implementing procedures to manage the company’s growing intellectual property portfolio including implementing a system for, and monitoring the completion of, the drafting, filing and prosecution of patent and trademark applications by outside counsel.
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Senior ScientistMillipore Corporation - Milligen/Biosearch Division Jan 1988 - Aug 1994Responsible for completing research, development and pilot production assignments in the areas of nucleic acid chemistry, peptide chemistry, protein sequencing and peptide nucleic acid (PNA) chemistry.
Brian Gildea Skills
Brian Gildea Education Details
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Suffolk University Law SchoolLaw -
Boston CollegeBio Organic Chemistry -
Stonehill CollegeChemistry
Frequently Asked Questions about Brian Gildea
What company does Brian Gildea work for?
Brian Gildea works for Stealth Biotherapeutics
What is Brian Gildea's role at the current company?
Brian Gildea's current role is Senior IP Counsel at Stealth BioTherapeutics.
What is Brian Gildea's email address?
Brian Gildea's email address is bd****@****ast.net
What schools did Brian Gildea attend?
Brian Gildea attended Suffolk University Law School, Boston College, Stonehill College.
What skills is Brian Gildea known for?
Brian Gildea has skills like Patents, Intellectual Property, Biotechnology, Chemistry, Prosecution, Patent Litigation, Licensing, Lifesciences, Cell Biology, Trademarks, Technology Transfer, Patent Applications.
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