McAndrews, Held & Malloy, Ltd. is a premier, full-service intellectual property law firm. Some of the world’s largest and most iconic companies, as well as other businesses and innovators of all sizes and in virtually every industry, rely on McAndrews to handle complex, high-stakes intellectual property matters.I have 20 years of experience in helping companies innovate and maximize the value of their intellectual property by providing expertise in patent prosecution, portfolio management, competitive intellectual property analysis, IP litigation, and management of complex multi-faceted intellectual property transactions. This expertise cuts across multiple technology areas, including pharmaceuticals, materials science, organic and inorganic chemistry, mechanical engineering, medical devices, and biochemistry.

Head of intellectual property legal function within Acer. I worked with the executive leadership team to shape the IP strategy for the company. My key responsibilities included:• Assisting the CLO and CBO in identifying IP opportunities, conducting M&A diligence, and negotiating agreements;• Supervising outside counsel and counsel regarding the development, prosecution and maintenance of patent and trademark properties.• Managing litigation risks through landscape and freedom to operate analyses, and drafting of legal opinions;• Overseeing the internal IP budget and billing with outside counsel and vendors; and• Identifying exclusivity pathway opportunities (Orphan Drug, Hatch-Waxman) with VP, Regulatory and team.

Led the intellectual property (IP) function for Beckman Coulter’s Clinical Chemistry and Immunoassay (CCIA) Business Unit, along with managing Beckman’s trademark portfolio. Counseled clients, including executive-level stakeholders, on legal and IP matters including IP strategy, litigation, and business innovation. Negotiated and prepared transactional agreements, such as licenses and development agreements.Selected Accomplishments:• Directed a team of attorneys and agents that managed Beckman’s portfolio of over 600 patent families across an array of technologies, including chemistry, molecular biology, biochemistry, engineering, and software. • Supervised U.S. and foreign law firms engaged in patent portfolio management.• Functioned as lead attorney in patent and trademark litigation, both in the US and internationally. • Supported the M&A team on IP issues in due diligence and transactional matters.• Implemented program to strengthen innovation at Beckman by providing training in IP to technical teams, along with initiating brainstorming sessions and deploying a process for invention harvesting.• Built and managed budgets for IP function in conjunction with VP of IP and GC.• Headed development of legal operations team to improve organizational efficiency of the IP function.

Supported Corning’s Research and New Business Development Divisions on IP and transactional matters. Advised clients on strategic use of IP, maximizing patent portfolio value, risk mitigation, freedom-to-operate and the development of legal opinions. Managed the work of both in-house and outside counsel.Selected Accomplishments• Led IP development for multiple research programs, including organic and inorganic materials programs, from initiation to commercialization. o Developed training materials directed to IP rights, confidentiality, and agreements. o Engaged teams in IP development, including brainstorming and ID drafting. o Worked with businesses to prepare IP plans and roadmaps. o Presented legal risks and mitigation strategies to executive leadership.• Managed a patent portfolio of 500+ patents and patent applications related to 10 different research programs and technologies, including drafting over 100 patents myself and prosecuting ~50% of these cases internally.• Championed efforts to develop comprehensive IP policies and procedures within the legal department, including development of IP strategy and IP Plan documents, invention disclosure revisions and review processes, and processes for assessing the quality of work product produced by outside counsel.

Legal work in research, development, and specialty materials divisions. Responsibilities included counseling clients on IP and legal matters including IP development, legal strategy, and portfolio management. Drafted patent applications and prosecuted U.S. and foreign applications. Managed the work of outside counsel. Negotiated transactions and prepare transactional documents, including licenses and joint development agreements.

Managed client patent portfolios and counseled clients on intellectual property-related issues, such as infringement and patentability. Performed due diligence analyses of patent portfolios as related to, for example, mergers, licensing, and initial public offerings. Prepared legal opinions and memoranda and worked with litigators in the analysis of intellectual property-related issues and developed litigation strategies for patent litigation.

Drafted patent applications across multiple technologies, including pharmaceuticals, biotechnology, bioengineering, chemistry, nanotechnology, and material science. Prosecuted U.S. and foreign patent applications. Instituted patentability and freedom-to-operate searches along with preparing patentability, validity, and infringement opinions. Researched, consulted with, and prepared experts for litigation.

Design of patented laser-based technologies for depositing biological materials Application of technologies to regenerative medicine, protein and cell-based microarrays, and whole cell-based biosensors.Inventor on 3 patents: U.S. Pat. Nos. 7,294,367, 7,875,324, and 7,381,440.Co-author on 10 articles and three book chapters based on post-doctoral research.