Pharmaceutical Patent Attorney and Consultant

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