USA

Xiaoguang Michelle Gao

Dr. Gao is Assistant General Patent Counsel at Eli Lilly and Company, supporting biologics and genetic medicine assets. She obtained her Ph.D. in Molecular Biology from Northwestern University, and J.D. from the University of Illinois. Prior to joining Eli Lilly, she was a Patent Attorney at Novartis Institutes for BioMedical Research, where she supported ImmunoOncology and Neuroscience programs. She also worked for Fish & Richardson as an associate, focusing her practice on biopharma-related patent prosecution and litigation there.

Michelle E. O'Brien

Michelle E. O’Brien has more than 20 years of experience representing both domestic and foreign clients of all sizes in the areas of patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of Ms. O’Brien’s technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products including new chemical entities and formulations, as well as novel solid forms including polymorphs, cocrystals, and amorphous forms of compounds. Ms. O’Brien’s expertise includes all aspects of preparing and prosecuting U.S. and foreign patent applications, such as patent drafting and prosecution, as well as more complex matters such as reissue and reexamination proceedings, appeals hearings, Post-Grant Reviews (PGR), and Inter Partes Reviews (IPR) before the Patent Trial and Appeal Board (PTAB). Her litigation expertise focuses on patent infringement cases including, for example, Hatch-Waxman litigation involving Abbreviated New Drug Applications, and includes all stages from pre-discovery through trial. Ms. O’Brien’s current practice includes building and maintaining clients’ patent portfolios, as well as analyzing competitors’ patent portfolios, preparing patentability, validity, and infringement opinions, conducting pre-litigation and product-clearance analyses, challenging and defending patents in post-grant proceedings before the PTAB (PGRs and IPRs), and litigating patent infringement lawsuits. Ms. O’Brien also provides pre-litigation counseling to clients in order to maximize the value of their patent portfolios and avoid the valid rights of others, relying on her broad background and extensive experience. Ms. O’Brien also lectures both domestically and abroad on various patent law topics, such as inventorship, inequitable conduct, Patent Term Extension (PTE) and Patent Term Adjustment (PTA), and patenting and litigating solid forms of compounds.

Tom Irving

Tom Irving has some 48 years of experience in intellectual property law. His U.S. pharma practice includes America Invents Act (AIA) post-grant proceedings, due diligence, counseling, patent prosecution, reissue, and reexamination. In addition to advising on procuring strong U.S. patents, Tom 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, supplemental examination, and validity analysis, including Obviousness-Type Double Patenting and Safe Harbor protection under 35 U.S.C. section 121.. He has served as lead counsel in numerous patent interferences, reissues, and reexaminations; as lead counsel in numerous AIA post-grant proceedings; and as an expert witness in patent litigation and patent procurement.

Marbury Law Group

More

Marbury Law Group: STRATEGIC INTELLECTUAL PROPERTY COUNSELING Marbury attorneys transform your ideas and innovations into valuable IP assets. Our attorneys manage large, medium, and small patent portfolios, and recognize your need for prompt, high quality strategic advice. We help start-up and emerging technology companies leverage their intellectual assets to achieve their business goals. In fact, many of our team members have worked at start-ups, and understand the demands facing start-up and emerging technology companies. Our attorneys work with your technical personnel to harvest potential intellectual property from your innovative development work. We have the technical skills to understand your technology and how your innovations can provide you with competitive advantages. Our diverse technical backgrounds, graduate engineering degrees, former industry, and USPTO experience allow us to quickly grasp, describe, and claim the inventions in your patent applications. Our lower overhead allows us to offer flat fees and keep our billing rates significantly lower than those of “big-law” firms, which allows us to take the time to understand the technology behind each invention and to provide cost effective answers, strategies, and patent applications. Furthering your business is our priority. Your business plan becomes the focus of our IP counseling and strategic advice. Let us put our knowledge and experience to work for you.

Eli Lilly and Company

More

Lilly was founded in 1876 by Colonel Eli Lilly, a man committed to creating high-quality medicines that met real needs in an era of unreliable elixirs peddled by questionable characters. His charge to the generations of employees who have followed was this: "Take what you find here and make it better and better." More than 145 years later, we remain committed to his vision through every aspect of our business and the people we serve starting with those who take our medicines, and extending to health care professionals, employees and the communities in which we live.

USA Intellectual Property Pharmaceutical April 2024 Vol.17, No. 67, Spring 2024