Pharmaceutical Patent Attorney and Consultant

Technical Consultant #1552


Expertise

  • Expert in planning and executing pharmaceutical and biotechnology research and development strategies.
  • Experienced Hatch-Waxman litigator from a corporate point of view.
  • Prepared witnesses and attended depositions for corporate personnel.
  • Conducted due diligence for possible in-licensing candidates.
  • Negotiated and drafted licensing agreements.
  • Familiar with FDA regulations as they pertain to NDA's and sNDA's.
  • Patent strategy, patent portfolio management and patent assessments.
  • Skilled at Paragraph Four Patent litigations.
  • Drafted patent term extension applications.
  • Reviewed patents for suitability for listings in the Orange Book.
  • World wide business development in negotiating and drafting license agreements.
  • Understands the relationships between patent law and FDA requirements.

Experience

Undisclosed Pharmaceutical Firm, Vice-President, Corporate Intellectual Property Department, 1991 - 2009

  • Supervised a group of 6 attorneys with world-wide responsibility for Oncology and Anti-Infective research.
  • Participated in two major Paragraph Four Litigations.
  • Prepared witnesses, attended depositions and helped plan overall strategy with major issues involving double patenting, inequitable conduct and 103 art.
  • Led various due diligence teams in evaluating in-licensing and acquisition opportunities.
  • Advised management as to the strengths and weaknesses of patent portfolios.
  • Worked with world-wide business development in negotiating and drafting license agreements.
  • Familiar with the relationship between patent law and FDA requirements.
  • Worked with the intricacies of the Hatch-Waxman Act.
  • Decided on Orange Book listings for newly launched products.
  • Produced Freedom to Operate opinions for research and development management.
  • Worked with R&D Management in planning and executing patent strategy.

Bristol-Myers Squibb, Princeton, New Jersey, Staff Attorney, 1980 - 1990

  • Prepared and prosecuted patient applications in the pharmaceutical area.
  • Developed expertise in foreign filing patent matters.
  • Performed client counseling for the Consumer Division.

Wyeth Laboratories, New York, NY, 1972 - 1980

  • Drafted and prosecuted patent applications for various divisions of the company which included pharmaceuticals, household products and automobile touch-accessories.

Mobile Oil Corporation, New York, NY, 1969 - 1972

  • Worked as staff attorney dealing with new catalytic compositions.

Honors & Publications

Credentials

  • Registered in the United States Patent Office
  • Member of the New York Bar

Academic and Professional Affiliations

  • American Bar Association
  • American Patent Law Association

Patents

  • Written patent numbers can be supplied upon request

Education

  • M.S. Chemistry, St. John's University, Graduate School, New York, NY
  • B.S. Chemistry, City College of New York, NY
  • LLB School of Law Fordham University, New York, NY
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