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Patent attorney with substantial law firm and in-house experience. Particular experience in creating and implementing intellectual property strategies for valuable product lines. Proficient in every aspect of IP practice, including creating and managing patent portfolios, conducting infringement risk assessments, strategic counseling, trademark clearances, negotiating IP agreements, conducting due diligence investigations, and managing infringement litigation and global post-grant proceedings. Focused particularly on aligning all aspects of the IP practice with business goals.- Created an IP department, from the ground up, at a major business. Tasks included purchasing an IP portfolio management system, hiring staff, training business employees, and implementing an IP strategy aligned with overall business objectives. Grew the patent portfolio from a handful of patents to thousands of world-wide matters.- Proven track record of aggressively protecting franchise products. - Managed all aspects of patent litigation for multiple businesses, including selecting and directing trial counsel, managing litigation budgets, and negotiating acceptable resolutions.- Negotiated and drafted various types of agreements with universities and other entities, including license, technology transfer, settlement, consulting, and non-disclosure agreements.- Created and directed cross-functional teams to expand critical patent portfolios.- Created a process within the commercial teams for identifying opportunities to limit competitors’ options.Substantial pro bono practice focusing on landlord-tenant, family law, and consumer rights litigation.
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Assistant General CounselBd Aug 2005 - PresentFranklin Lakes, New Jersey, UsI am responsible for all intellectual property needs for several BD businesses. My primary focus is obtaining high-quality patents that effectively limit our competitors' options. I oversee the patent portfolios for multiple businesses, each with many ongoing projects; develop suitable patent filing strategies; manage outside prosecution counsel; ensure landscape searches, FTO assessments, and appropriate filings are efficiently and timely completed through all project phase gates; sponsor ideation sessions to create a valuable and assertable patent portfolio specific to the business's markets; and work closely with the commercial teams to identify products that may infringe BD's intellectual property.Prior to BD's acquisition of Bard, I represented one of the four major Bard businesses for all its intellectual property needs. In addition, I was responsible for managing nearly all of Bard's patent litigation. This included conducting initial legal assessments; working with the business team to build a business case for pursuing litigation; managing litigation budgets; ensuring the litigation strategy was aligned with the business's goals; and communicating effectively and efficiently to leadership. My experience ranged from conducting pre-filing investigations to reviewing cert petitions. I have been deposed many times on behalf of my employer in connection with commercial and patent litigation, both as an individual and corporate witness.I also have significant experience conducting and overseeing evaluation of external intellectual property portfolios and assessing risk for the corporate development team. -
AssociateFinnegan, Henderson, Farabow, Garrett & Dunner Llp Feb 1999 - Feb 2004Washington, Dc, UsMy litigation responsibilities included legal research, drafting pleadings, motions and supporting briefs, and working with expert witnesses. I also drafted a significant number of opinions relating to patent infringement and validity. My prosecution practice included all phases of domestic and foreign patent prosecution, ranging from drafting new applications to arguing before the Board of Patent Appeals and Interferences. -
Primary Patent ExaminerUspto Jun 1990 - Feb 1999Alexandria, Virginia, UsExamined applications directed primarily to organic synthesis and pharmaceutical compounds. Vested with full signatory authority in 1996.
Brian Burn Skills
Brian Burn Education Details
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George Mason University - Antonin Scalia Law SchoolLaw -
King UniversityChemistry -
The George Washington UniversityGraduate Organic Chemistry
Frequently Asked Questions about Brian Burn
What company does Brian Burn work for?
Brian Burn works for Bd
What is Brian Burn's role at the current company?
Brian Burn's current role is Assistant General Counsel at Becton Dickinson & Co..
What is Brian Burn's email address?
Brian Burn's email address is bm****@****ail.com
What is Brian Burn's direct phone number?
Brian Burn's direct phone number is +180151*****
What schools did Brian Burn attend?
Brian Burn attended George Mason University - Antonin Scalia Law School, King University, The George Washington University.
What skills is Brian Burn known for?
Brian Burn has skills like Patents, Patent Prosecution, Intellectual Property, Patent Litigation, Prosecution, Litigation, Patentability, Legal Writing, Legal Research, Commercial Litigation, Legal Opinions, Client Counseling.
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