Elizabeth Barnhard Email & Phone Number

White Plains, Ny, Us

White Plains, New York

Work closely with clients to build strong intellectual property portfolios to protect new inventions and products, with an emphasis on pharmaceutical and biological products and related technologies. Responsible for patent, trademark and copyright preparation and prosecution, intellectual property due diligence, licensing and other types of agreements, and patentability, validity and infringement opinions. Advise on and litigate all types of intellectual property matters.

Mount Carmel, Illinois, United States

Mt. Carmel Public Utility Co. is an Investor Owned Utility incorporated in the State of Illinois on November 14, 1913, which has established a distribution system for delivering electricity and natural gas and supporting industrial growth to residential and non-residential customers in the city of Mt. Carmel, IL, parts of Wabash County and to residents and businesses in the Villages of Allendale, Patton, St. Francisville, Bellmont, Keensburg, and Cowling.

After the merger with Wyeth, continued to lead multi-disciplinary patent team servicing therapeutic/research areas including oncology/immunology, biologics and biotherapeutics as part of a transitional role. Developed, implemented and oversaw comprehensive global patent strategy, including identification and assessment of patentable inventions, third party patents and applications for possible licensing, design arounds, and enabling platform technologies. Conducted patentability, freedom-to-operate, product and manufacturing patent clearances. Performed due diligences for transactional work and reviewed draft licenses. Managed complex licensed-in patent portfolios for R & D alliances. Provided legal counsel and educate R & D management, business development, commercial management, and scientists regarding patent and trade secret issues, rights and obligations under agreements. Provided guidance on patent strategy for collaboration and licensed-in patent prosecution.Managed attorneys and patent agents responsible for portfolio management, evaluation of invention disclosures, opinions, risk assessments, due diligence, client education and trade secret management. Managed Pearl River Patent Law Office, including all preparatory and design work with architects and building managers for move to new office space in summer of 2010, and implemented department policies and procedures. Supervised office manager in handling of budget, personnel, facilities, supplies, and equipment and supervised support staff.

Lead multi-disciplinary patent teams servicing therapeutic/research areas including oncology/immunology, infectious diseases/virology, central nervous system disorders, cardiovascular/metabolic disorders, and molecular genetics. Develop, implement and oversee comprehensive global patent strategy, including identification and assessment of patentable inventions, third party patents and applications for possible licensing, design arounds, and enabling platform technologies. Conduct patentability, freedom-to-operate, product and manufacturing patent clearances. Perform due diligences for transactional work and review draft licenses. Manage complex licensed-in patent portfolios for several R & D alliances. Provide legal counsel and educate R & D management, business development, commercial management, and scientists regarding patent and trade secret issues, rights and obligations under agreements. Provide guidance on patent strategy for collaboration and licensed-in patent prosecution.Managed attorneys and patent agents responsible for portfolio management, evaluation of invention disclosures, opinions, risk assessments, due diligence, client education and trade secret management. Supervised and trained summer law interns. Co-author of Wyeth’s May 3, 2006 comments on the U.S. Patent and Trademark Office’s notices of rulemaking on claims and continuation practice.Initiated creation of a departmental team and contributed to creation of and presentation on best practices to address major changes in patent practice resulting from the American Inventors Protection Act of 1999. Presented on best practices as panel speaker at AIPLA July 2001 seminar.Manage Pearl River Patent Law Office and implement department policies and procedures. Supervise office manager in handling of budget, personnel, facilities, supplies, and equipment. Supervised and improved performance levels of support staff, including leading training sessions on patent prosecution topics.

Patent preparation and prosecution in the biotechnical, chemical, and chemical engineering arts, including biomedicine, biotechnology, nutritional pharmacology, pharmaceuticals, diagnostic assays, immunology, hematology, and polymers.Involved in all phases of litigation and appeals of patent, trademark, copyright and unfair competition actions in federal and state courts and Section 337 proceedings before the U.S. International Trade Commission. Trademark preparation and prosecution, and litigation of trademark oppositions before the U.S. Patent and Trademark Office.

Involved in all phases of litigation and appeals of patent, trademark, copyright, and unfair competition actions in federal and state courts. Trademark preparation and prosecution, and litigation of trademark oppositions before the U.S. Patent and Trademark Office.

Engaged in general practice of law. Practice areas included commercial, tort, real estate, family, matrimonial, and estate law.

J.D., Cum Laude, Law

Activities and Societies: New York County Lawyers’ Associate Antitrust Moot Court Competition Editor & Writer, Council on the Environment.

B.A., Biology

Activities and Societies: Member, Perstare et Praestare Senior Honorary Society Member, Red Dragon Society Staff Writer, Biological.

Education record