Brian Gildea Email & Phone Number

Needham, Massachusetts, Us

Member 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.

Member 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.

Boston, Ma, Us

Member 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.

Counseled 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.

Waltham, Ma, Us

Member 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.

Member 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.

Responsible 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.

Responsible 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.

Responsible 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.

Responsible 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.

Jd, Law

Ms, Bio Organic Chemistry

Bs, Chemistry