2024 Advanced Chemical Patent Practice Institute

Speakers

• Albagli, David

  White & Case | Partner

  David Albagli, PhD is a Local Partner in White & Case's Global Intellectual Property Practice, based in Tokyo since 2010. His practice focuses on intellectual property spanning patent litigation, prosecution, opinion work, patent portfolio development, pre-litigation counseling, and due diligence investigations, as well as technology transactions, license agreements, and trademark matters. Dr. Albagli advises on a wide range of intellectual property and transaction-related matters in the pharmaceutical, chemical, and biotechnology sectors.
• Anoff, Ali

  Procter & Gamble | Director & Assistant General Counsel - Patents

  Ali Anoff is Director and Assistant General Counsel at Procter & Gamble. She is the primary patent attorney for Olay® skin care, a brand with net sales of more than $1 billion annually. Ali provides strategic legal counsel to the business to create and protect global intellectual property assets. Her practice focuses on IP strategy development, preparation and prosecution of global patent applications, freedom-to-practice assessments, enforcement, and due diligence.
• Barton, Matt

  Forresters | Partner

  Dr Matt Barton is a European and UK patent attorney and UPC Representative, and is Partner at Forresters where he heads the Munich office. Having qualified as a patent attorney in 2005, Matt is highly experienced in patent prosecution and drafting especially at the EPO and UKIPO. He has extensive experience of EPO opposition and appeal proceedings, handling multiple oral hearings each year, as well as freedom to operate and opinion work. His technical background is chemistry, with a focus on industrial chemistry, coating compositions, aerogels, battery materials, small molecules and drug conjugates. Matt’s particular specialism is in metallurgy, especially aluminium alloys and their methods of processing and production.
• Brock, Sean

  GSK | U.S. Vice President

  Sean Brock is an intellectual property strategist focused on protecting and facilitating innovation in the life science sector. He currently serves as the U.S. vice president for pharmaceutical patents at GSK. Over his career, Sean has provided IP guidance to sole inventors, academic institutions, start-ups, midsized biotechs, and some of the world’s largest healthcare companies. He has experience securing and asserting IP rights, defending against infringement allegations, structuring IP transactions, shaping legislation, and almost everything in between.
• Brougher, Joanna

  Indivior, PLC | Patent Attorney

  Joanna is a patent attorney who focuses her practice on all aspects of services related to patents in the areas of biotechnology, pharmaceuticals and medical devices, including patentability opinions, patent drafting, domestic and foreign patent prosecution, development and management of patent portfolios, and general client counseling during all phases of a product’s lifecycle, from concept to commercialization. Joanna’s patent experience covers a variety of complex and innovative inventions involving small molecule drugs, biologics, cell-based technologies, compositions, drug formulations and drug delivery systems, immunotherapeutics, medical devices, diagnostic tests, nanotechnology, and immunology, particularly vaccines and antibodies. Joanna also has experience counseling clients on the Hatch-Waxman Act and is monitoring developments involving biosimilars under the Biologics Price Competition and Innovation Act.
• Chipouras, Andrew

  Honigman | Patent Attorney

  Andrew Chipouras is a patent attorney practicing in all areas of patent law with a focus on preparing and prosecuting patent applications. In particular, he has experience working with clients to protect inventions inventions and strategically manage patent portfolios in technologies from chemistry and the life sciences to materials science and mechanical/electromechanical technologies. Andrew conducts due diligence on patent portfolios for licensing, acquisition, and investment transactions, prepares freedom-to-operate and invalidity opinions, and supports patent litigation and inter partes review proceedings.
• Crane, Sharon

  Rothwell Figg | Partner

  Sharon E. Crane, Ph.D.’s practice specializes in post grant trials at the Patent Trial and Appeal Board (PTAB), litigation, and patent prosecution and opinions for clients in the biotechnology area.
• Goldberg, Joshua

  Nath, Goldberg & Meyer | Co-Managing Partner

  Joshua Goldberg is Co-Managing Partner and the Partner-in-Charge of the Chemical, Pharmaceutical and Biotechnology Department of Nath, Goldberg & Meyer. Mr. Goldberg’s practice involves preparing and acquiring U.S. and foreign patents for his clients across a wide range of technology areas. His current practice places a particular emphasis on pharmaceutical, agriculture, and alternative energy technologies. He also advises corporate, university, and independent clients not only in how to obtain patents, but also how to bring new products to market without infringing someone else’s patents.
• Holloway, Chloe

  Hoffmann Eitle | British and European Patent Attorney, UPC Representative

  Chloe joined the Munich office of Hoffmann Eitle in 2016. Prior to joining Hoffmann Eitle, Chloe worked for a large Italian IP firm in Milan and for a boutique firm in Mexico City. Chloe works on drafting and prosecuting patent applications in a variety of different technical fields within chemistry, including organic chemistry, medicinal chemistry, pharmaceuticals and materials chemistry. She specialises in opposition and appeal proceedings before the EPO and has represented both patent proprietors and opponents in these proceedings.
• Irving, Thomas L.

  The Marbury Law Group, PLLC | Partner

  Tom Irving has more than 46 years of experience in the field of intellectual property law. His practice includes America Invents Act (AIA) post-grant proceedings, due diligence, counseling, patent prosecution, and reissue and reexamination. He counsels clients on a wide range of mainly pharmaceutical matters, including pre-litigation, Orange Book listings of patents covering FDA-approved drugs, infringement issues, enforceability and validity analysis.
• Kahler, Rachel

  General Mills | Patent Agent

  Dr. Rachel Kahler is a registered U.S. patent agent with General Mills, Inc. in the greater Minneapolis-St. Paul Area. Dr. Kahler joined General Mills in 2013, after working for more than 7 years in law firms preparing and prosecuting patent applications and having support roles in portfolio management, litigation, and freedom to operate investigations. Over more than 15 years, Dr. Kahler has worked with a variety of technologies, but currently focuses on food, biotechnology, and chemistry-related patent prosecution and portfolio management.
• Lee, Wan Chieh (Jenny)

  Haug Partners | Partner

  Wan Chieh (Jenny) Lee is a partner in the New York office of Haug Partners. Her practice focuses on strategic counseling, procurement of worldwide patent rights, due diligence, freedom to operate, and intellectual property transactions. She routinely advises clients in the pharmaceutical, biotechnology and medical device industries regarding patentability, validity, freedom-to-operate, and regulatory exclusivity. Jenny develops and executes patent procurement strategies that are aligned with clients’ immediate and long-term business goals. She leverages her strong ability to digest complex technical information with her experience in both patent procurement and litigation to provide clients with valuable transactional insights.
• Mak, Toby

  Tee & Howe | Senior Counsel / Patent Attorney

  Dr. Toby Mak is a registered Chinese Patent Attorney and has a Ph.D. in Chemistry. Dr. Toby Mak was born in Hong Kong and graduated from Hong Kong University of Science and Technology. He worked at one of the largest law firms in Hong Kong for 8 years before joining Tee & Howe.
• McKown, Jeremy K.

  Johnson & Johnson | Global Patent Head

  Jeremy is the Global Patent Head of Johnson & Johnson’s pharmaceutical business, where he manages a global team of attorneys and professionals focused on creating robust patent portfolios and providing strategic counsel to its’ Innovative Medicine companies. In addition, he advises on material R&D transactions and IP litigations, and actively works with external trade associations to ensure we have meaningful IP policies. Previously, he led the R&D Legal team responsible for drafting and negotiating complex agreements for J&J’s Innovative Medicine companies.
• Mueting, Ann

  Mueting, Raasch Group | Founding Shareholder

  Ann M. Mueting, Ph.D., J.D., is a founding shareholder of the firm Mueting Raasch Group in Minneapolis, Minnesota, which began in 1995 and represents Fortune 500 companies, biomedical firms, universities, various mid-size and startup companies, as well as individual entrepreneurs. Ann is a patent attorney practicing in the areas of patent prosecution, due diligence, and related opinion work with emphasis in chemical and biotechnology patent law.
• O'Brien Michelle E.

  The Marbury Law Group | Partner

  Ms. O’Brien has over 20 years of experience representing both domestic and foreign clients of all sizes in the areas of patent procurement and litigation, with an emphasis on chemical and pharmaceutical technologies. Exemplary areas of technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; pharmaceuticals, including new chemical entities and formulations; and novel solid forms including polymorphs, cocrystals, and amorphous forms of compounds.
• Patty II, R. Andrew (Drew)

  Phelps Dunbar LLP | Partner

  Mr. Patty is a Partner with the law firm Phelps Dunbar LLP. He leads the firm’s Artificial Intelligence Working Group and is a member of the firm’s Intellectual Property (IP) and Cybersecurity Practice Groups. A graduate of Tulane University and the University of North Carolina School of Law, he has extensive experience in preparing and prosecuting patents in the chemical, medical device and mechanical fields, as well as the software and financial services fields. His chemical experience includes preparation and prosecution in the fields of lithium battery chemistry, organo-metallic chemistry, biocides, catalyst reactions, pharmaceuticals and their intermediates, and bromine chemistry, amongst others.
• Prosser, Tony

  Knowles Intellectual Property Strategies | Registered Patent Agent

  Anthony R. Prosser, Ph.D., is a Registered Patent Agent with Knowles Intellectual Property Strategies (KIPS) in Atlanta, Georgia, and is also currently a law student at Georgia State University. Tony focuses on complex organic chemistry patent matters including drafting and prosecuting U.S. and international patent applications directed to new chemical compounds and synthetic methodology, due diligence, freedom to operate analysis, and patentability investigations. Tony’s technical areas of expertise include organic synthesis, process chemistry, medicinal chemistry, nucleoside chemistry and drug discovery and development.
• Ram, Jocelyn

  Fountainhead Law Group P.C. | Senior IP Counsel

  With over two decades of intellectual property experience, in both private practice and at USPTO, Ms. Ram brings a unique perspective to clients. Ms. Ram utilizes unique USPTO insider knowledge in strategizing with her clients on how to quickly acquire valid patents and build a comprehensive IP portfolio. Her technology background focuses on biomedical, mechanical, electromechanical, and software technologies, with specialization in the medical device field. Her biomedical engineering degree from Cornell University, and communications & technology master’s from Georgetown University provide a strong foundation for both understanding the technical and legal aspects of patent law and for expertly communicating this subject matter to diverse audiences.
• Simpson, Toby

  Hoffmann Eitle | British and European Patent Attorney, UPC Representative

  Toby Simpson's patent practice lies principally in the fields of pharmaceuticals and chemistry. He specialises in drafting and prosecuting patent applications directed to pharmaceutical products (including new chemical entities, peptide and antibody therapeutics, pharmaceutical formulations, polymorphs, salts, new medical uses and dosage regimes), cosmetic products, personal care products, medical devices, polymers, energy storage devices and fuels. He also advises clients in relation to SPCs, orphan drug designations, clinical trial exemptions and regulatory data protection. A keen problem solver, Toby is frequently entrusted by clients with technically and legally challenging cases.
• Smalley, Laura W.

  Harris Beach PLLC | Partner

  Laura W. Smalley is a partner in the Intellectual Property Practice Group of Harris Beach PLLC, one of the leading law firms in New York State as ranked by the National Law Journal. She was selected as one of the Best Lawyers in America and represents clients in patent licensing, litigation and prosecution. Laura focuses on protection and enforcement of intellectual property rights and clients’ development of their technology. She has litigated numerous patent infringement suits involving medical devices, electronic components and imaging technology, including acting as trial counsel in a patent infringement action over key components for pacemakers and implantable defibrillators that resulted in a $27 million judgment.
• Szweras, Melanie

  Bereskin & Parr LLP | Partner

  Melanie Szweras is a partner with Bereskin & Parr LLP and a member of the Life Sciences practice group. She is also co-leader of the Privacy/Regulatory, Advertising, Marketing practice group. Melanie’s practice focuses on drafting and prosecution of applications relating to biologics, diagnostics, biotechnology, food and pharmaceuticals. Melanie offers strategic advice and expertise to her clients, provides validity and freedom to operate opinions and is involved in related patent litigation and licensing.
• Tostmann, Holger

  Wallinger, Ricker, Schlotter Tostmann | Partner

  Holger is German and European Patent Attorney and UPC representative at Wallinger, Ricker, Schlotter, Tostmann since 2008. Holger holds a doctorate in chemistry, respectively and specializes in patent prosecution with an international focus as well as in opposition (appeal) proceedings Holger’s technical expertise is based on a long research career, 5 years of which were spent at top notch US research facilities and includes chemical engineering, polymer chemistry, materials science, biophysical chemistry and pharmaceuticals.

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