MICHAEL A. GOLLIN

CURRICULUM VITAE

Office:                                          :
Venable LLP
575 7^th Street, NW 
Washington,DC 20004
                   Home:                                            Bowie, Maryland 20715

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PROFESSIONAL

Venable LLP, Washington, D.C.

Partner, Intellectual Property Division (1998-present)

Georgetown University McDonough School of Business, Washington, D.C.

Adjunct Professor, Strategic Management of Intellectual Property (2000-12)

Franklin Pierce Law Center (now University of New Hampshire), Concord, New Hampshire

Adjunct Professor, Global Management of Intellectual Property (2008-11)

Spencer & Frank, Washington, D.C., Partner (1995-98)

Keck, Mahin & Cate, Washington, D.C., Partner (1992-95)

Michael A. Gollin, Attorney at Law, Washington, D.C. (1993)

Sive, Paget & Riesel, P.C., New York, New York (1988-90), Washington, D.C. (1990-93)

Associate

Kenyon & Kenyon, New York, New York

Associate, 1984-88; Summer Associate, 1983

Weingarten, Schurgin, Gagnebin & Hayes, Boston, Massachusetts

Student Associate, 1983-84

Center for Law and Health Sciences, Boston, Massachusetts

Research Assistant, 1982

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Stanley Kaplan, GRE Instructor, 1982

English Instructor for engineers, Zurich, 1979-81

ETH, Zurich, Biology Teaching Assistant, 1981

Population Index, Princeton, word processor, 1977

Electronics sales clerk, 1976

Waiter, 1975

Busboy, 1974

Stock clerk, 1973

Newspaper boy, 1971-72

EDUCATION

Boston University School of Law, Boston, Massachusetts

Juris Doctor, 1984

Honors: Tauro Scholar (first year), Liacos Scholar (second year), Faculty Award

University of Zurich, Zurich, Switzerland

Master of Science (Diplom), 1981, Zoology and Molecular Biology

Honors: Swiss National Foundation Research Fellow

Princeton University, Princeton, New Jersey

A.B., 1978, Department of Biochemical Sciences

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Brighton High School, Class of 1974, Rochester, New York

Twelve Corners Middle School

Harley School

Eton Porny School

PERSONAL

Married Jill Dickey 1990

Children: Natasha b 1991, Max b 1994, Julia b 1997

Hobbies: water sports (swimming, skiing, kayaking, fishing, sailing, white water rafting, scuba diving), running, hiking, camping, downhill skiing, house plants and gardening, clearing and maintaining woodland trails, home repair, cooking, any activity of my children, travel, concerts, plays, museums, photography, creative writing

BAR ADMISSIONS

Current: Maryland, and the District of Columbia

U.S. Patent and Trademark Office, Registration No. 31,957

Also: New York, Massachusetts, U.S. Supreme Court, Court of Appeals for the Federal Circuit, and U.S. District Courts for the Southern and Eastern Districts of New York, Maryland, and the District of Columbia

APPOINTMENTS, AWARDS, AND ELECTED POSITIONS

Recognized as a “Top Rated Lawyer” in American Lawyer and Corporate Counsel’s Washington DC & Baltimore’s Legal Leaders, Intellectual Property (2013)

Recognized in IAM Patent 1000: The World’s Leading Patent Practitioners (2012-2014)

Recognized by the Intergovernmental Panel on Climate Change for contributing to the award of the Nobel Peace Prize to the IPCC (2007)

Received the Benjamin R. Civiletti Pro Bono Lawyer of the Year Award (2004), and the Young Lawyer’s Chair Award (1994)

Elected Maryland Delegate to the Democratic National Convention for John Kerry (2004)

Member, Advisory Board, Johns Hopkins Biotechnology Network (2003-05)

Member, Advisory Board, American Association for the Advancement of Science Project on Science and Intellectual Property in the Public Interest (2003-05)

Founder, Chair, Public Interest Intellectual Property Advisors, Inc. (www.piipa.org) (2002-)

Committee Member, Intergovernmental Panel on Climate Change, Special Report on Technology Transfer (1998-2000)

Member, Board of Trustees, Rene Dubos Center for Human Environments, Inc. (1994-2004)

Advisor, Boston University Journal of Science and Technology Law (1994-2000)

Member, Committee on Innovative Remediation Technologies, National Research Council (National Academy of Sciences) (1994-97)

Recipient, Young Lawyer’s Chair, Boston University School of Law (1994)

Member, Board of Directors, Anne Arundel County High Technology Council (1993-94)

Special Consultant, United Nations Environment Programme (1993)

Vice-Chairman, Special Committee on Science and Technology, American Bar Association

Section of Natural Resources, Energy, and Environmental Law (1992-2000)

MEMBERSHIPS

Association of University Technology Managers

American Bar Association

Licensing Executives Society

BOOKS

“Driving Innovation: Intellectual Property Strategies for a Dynamic World,” Cambridge University Press (2008)

“Government Contracting” and “Science and Technology” in Homeland Security Deskbook: Private Sector Impacts of the War Against Terrorism,” co-authored with Tom Madden (LEXIS-NEXIS 2006)

“Elements of Commercial Biodiversity Prospecting Agreements,” in Biodiversity and Traditional Knowledge: Equitable Partnerships in Practice, Sarah Laird, ed. (Earthscan 2000)

International Agreements and Legal Structures, in “Methodological and Technological Issues in Technology Transfer,” with Intergovernmental Panel on Climate Change, Cambridge University Press (2000)

“Innovations in Ground Water and Soil Cleanup: From Concept to Commercialization,” co-author with Committee on Innovative Remediation Technologies, National Research Council, National Academy of Sciences, The National Academy of Sciences book (1997)

“Biodiversity Prospecting – Using Genetic Resources for Sustainable Development,” co-author, World Resources Institute (May 1993)

BLOG

innovationlifelove | A tangled web

ARTICLES

“Biopiracy: The Legal Perspective,” Actionbioscience (September 09, 2014)

“Myriad Decision Places Biotech at a Crossroads,” BioPharm International (August 2010)

“A Blow to Gene Patenting: Impact on Inventors,” Law360 (May 13, 2010)

“‘Theft or Innovation?’ a review of Piracy: The Intellectual Property Wars from Gutenberg to Gates,” Nature (February 2010)

“Intellectual Property Rights and Innovation,” eJournal USA, Roots of Innovation, Vol. 14, no. 11 (November 2009)

“China’s Disclosure of Origin Law To Enter Into Force on October 1, 2009,” Law360 (September 29, 2009)

“Innovation Must Come Next,”Market Watch (October 20, 2008)

“Biopiracy Started with a Bounce,” Nature (February 2008)

“Above the Law; Federal Circuit Court Ruling May Give Patent Owners Immunity From State Laws,” Inside Counsel (November 2007)

“Legal Brief: Protecting Your Intellectual Property Abroad,” co-authored with Andrew D. Price, Associations Now Supplement (May 1, 2006)

“Developing a Strong Patent Strategy – Leading Lawyers on Infringement, Litigation, and Protection for Businesses” (April 2006)

“Winning the Game: Public Funds for Biotech Companies,” Journal of Commercial Biotechnology (April 2006)

“Feasibility of National Disclosure of Origin,” in Disclosure Requirements: Ensuring Mutual Supportiveness between the WTO TRIPS Agreement and the CBD, M. Chouchena-Rojas, M. Ruiz Muller, D. Vivas and S. Winkler, eds., IUCN and ICTSD (April 21, 2005)

“Developing a Strong Patent Strategy,” in Developing a Patent Strategy: Leading Lawyers on Infringement, Litigation, and Protection for Businesses (Aspatore 2005)

“Science, Technology, and Intellectual Property,” chapter 15 in Homeland Security Deskbook: Private Sector Impacts of the War Against Terrorism” (lead author) (Matthew Bender 2004, revised 2005)

“Natural Products-Based Drug Discovery in 2004: Challenges, Expectations and Case Studies,” National Society of Chemistry (February 2004)

“Discovery in Patent Cases,” co-author, in Intellectual Property Counseling and Litigation, L. Horwitz and E. Horwitz, eds. (Matthew Bender 1988, revised 2004)

“Protecting Bioinformatics’ Value,” Modern Drug Discovery (October 2004)

“Managing the Cost of IP Assets,” California Lawyer (November 1, 2002)

“Sustainable Innovation for Public Health,“ Food and Drug Law Institute Update Magazine (January/February 2002)

“Keep Drugs Coming: Interests of Innovators and Poor Patients Can Be Kept in Balance,” Legal Times (November 5, 2001)

“Seven Changes Enacted in the Intellectual Property and Communications Omnibus Reform Act of 1999,” Intellectual Property Today (May 2000)

“Legal and Practical Consequences of Biopiracy,” Diversity 15:2 (1999)

“Probing the Human Genome: Who Owns Genetic Information” Symposium co-author, 4 Boston U. Journal of Science & Technology Law 2 (1997)

“Patent Strategies in China,” Managing Intellectual Property (November 1997)

“Introduction,” in International Protection of Intellectual Property Rights, D. Campbell, ed. (FT Law & Tax 1997)

“At the Crossroads: Intellectual Property Rights and Agricultural Biotechnology,” Proceedings of the Third Asia-Pacific Conference on Agricultural Biotechnology: Issues and Choices, Hua Hin, Thailand (November 1996), pp. 39-46.

“Global Policies, Local Actions: The Role of National Legislation in Sustainable Biodiversity Prospecting,” co-author, 2 Boston University Journal of Science and Technology Law 16 (May 1996)

“Protecting Intellectual Property, Part II,” Inventors’ Digest (May/June 1996)

“Protecting Intellectual Property, Part I,” Inventors’ Digest (March/April 1996)

“Provisional Patent Applications: File Early, File Often,” The Law Works (August 1995)

“What Technology Companies Should Know About GATT,” The Law Works (March 1995)

“Patenting Recipes From Nature’s Kitchen,” Bio/Technology 12:406 (1994)

“Commentary on Tropical Genetic Diversity” in Conservation of Plant Genes II: Utilization of Ancient and Modern DNA, R.P Adams et al., eds. (Missouri Botanical Garden, St. Louis 1994)

“Pollution Trading,” “Technology Forcing,” “Delaney Clause,” “TSCA,” and “FIFRA,” entries in The Encyclopedia of the Environment, W. Eblen and R. Eblen, eds. (Houghton Mifflin 1994)

“An Intellectual Property Rights Framework for Biodiversity Prospecting” and “The Convention on Biological Diversity” in Biodiversity Prospecting: Using Genetic Resources for Sustainable Development; also co-editor (World Resources Institute 1993)

“Biodiversity: Preventing an Ill–Begotten Harvest and Ownership Strategies for Conserving Biological Diversity,” paper presented at The Industrial Utilization of Tropical Plants and the Conservation of Biodiversity Conference (Enugu, Nigeria, February 18, 1993)

“Carving Property Rights Out of the Public Domain to Conserve Biodiversity,” paper presented at the 3rd Common Property Conference of the International Association for the Study of Common Property (Washington, D.C., September 18, 1992)

“Using Intellectual Property to Improve Environmental Protection,” 4 Harvard Journal of Law and Technology 193 (1991)

“Patent Law and the Environment/Technology Paradox,” 20 Environmental Law Reporter 10171 (1990)

VENABLE PUBLICATIONS

“A Decade of Pro Bono Innovation at Venable LLP: Public Interest Intellectual Property Advisors (PIIPA)” (June 25, 2013)

“Federal Circuit Clarifies the Scope of Intervening Rights,”, co-authored with Meaghan Hemmings Kent, and Fabian M. Koenigbauer, Venable Vitae (May 2012)

“Federal Circuit Vacates Opinion in Marine Polymer Technologies, Inc. v. Hemcon, Inc., Agreeing to Rehearing En Banc; Venable Files Amicus Brief on behalf of Industry Associations,” co-authored with Meaghan Hemmings Kent (February 16, 2012)

“Monetizing Intellectual Property to Improve Financial Performance,” IP Buzz (November 2011)

“Implications of Stanford v. Roche on University-Industry Relations,” co-authored with David D. Conway (June 2011)

“Venable Team Files Amicus Brief for Senator Bayh in Support of Bayh-Dole Act in Stanford v. Roche,” co-author, Client Alerts (January 2011)

“Venable Team Files Amicus Brief for Senator Bayh in Support of Bayh-Dole Act in Stanford v. Roche,” co-authored with The Honorable Birch Bayh, John F. Cooney and David D. Conway (December 23, 2010)

“The Grass Is Greener at the PTO: USPTO Launches a New Pilot Program for ‘Green’ Technology“, co-authored with Henry J. Daley, Ph.D. (December 10, 2009)

“Insights on President Obama’s Strategy for American Innovation,” Client Alerts (September 2009)

“The Who, What and When of Invention,” co-authored with Lars H. Genieser, Ph.D., IP Buzz (September 2009)

“Accessing Biological Resources: New Best Practices and Compliance Programs,” (June 2, 2009)

“Do You Need a Biodiversity IP Compliance Program?,” (June 2, 2009)

“Tougher Obviousness Test for U.S. Patents: KSR’s Continuing Impact”, IP News and Comment (December 2008)

Driving Innovation: Intellectual Property Strategies for a Dynamic World, IP News & Comment (February 2008)

“Requirements for U.S. Patents” (November 1, 2007)

“Invention Disclosure Questionnaire” (Revised October 31, 2007)

“OMB Approves USPTO’s New Rules Restricting Continuation Applications and Patent Claims” (July 2007)

“Intellectual Property Issues in Nanotechnology,” co-authored with Lars H. Genieser, Ph.D., Journal of Commercial Biotechnology (May 15, 2007)

“Synthesizing the Ubiquitous: Venable LLP’s White Paper on Nanotechnology Law,” co-authored with Bruce R. Parker, Margaret N. Strand, Lars H. Genieser, Ph.D. and David S. Gray (March 1, 2007)

“The Year in Review 2006 – Pharma/Biotech/Chemical Federal Circuit and US Supreme Court Patent Case Law” (January 20, 2007)

“Requirements for U.S. Patents,” (November 1, 2007)”

“Answering the Call: Public Interest Intellectual Property Advisors,” Washington University Journal of Law & Policy, Volume 17, pp. 187-223 (April 2006)

“Intellectual Property and Biodiversity: The Good, the Bad, and the Ugly“ (United Nations University, Paris, France, November 3-4, 2005); see also https://www.venable.com/intellectual-property-and-biodiversity-the-good-the-bad-and-the-ugly-11-03-2005/

“President Signs Consolidated Appropriations Act, 2005 (H.R. 4818) (Enacted December 8, 2004),” co-authored with Robert Kinberg (December 8, 2004)

“Patent Applicants Should Consider Paying Excess Claim Fees Immediately to Avoid Significant Increases (Expected as soon as December 6, 2004),” co-authored with Robert Kinberg (December 2, 2004)

“The American Inventors Protection Act Accelerates Patent Prosecution,” co-authored with Keith G. Haddaway, Ph.D. (December 1, 2000)

“New Rules for Natural Products Research,” (September 1, 1999)

“Protecting Your Company’s Intellectual Property,” co-authored with Rosemary E. Dailey and Ronald W. Taylor (April 1, 1999)

“Growing a Business With Intellectual Property Checklist: Intellectual Property Triggers” (1996)

“Biological Materials Transfer Agreements,” Bio/Technology 13:243 (March 1995)

SPEECHES, PANELS, WEBINARS, AND INTERVIEWS

Speaker, “The Role of Intellectual Property in Food Security,” Public Interest Intellectual Property Advisors (June 6, 2013)

Speaker, “The Challenge of Faculty Consulting Agreements: To Review or Not to Review,” AUTM 2013 Annual Meeting (March 2, 2013)

Speaker, “Fundamentals of Intellectual Property,” USDA Commercialization Assistance Training Program (CATP) (November 5, 2012)

Speaker, “Getting the Most Value from Legal Counsel,” Larta Institute (October 18, 2012)

Speaker, “After the Supreme Court Healthcare Ruling: What’s Your Next Move?” (June 29, 2012)

Speaker, “Patenting Small Molecule Therapeutics: From Target to Clinic” (University of California, Los Angeles CA, June 7, 2012)

Speaker, “After Prometheus v. Mayo: Patent Eligibility in the Biotechnology and IT Sectors,” Life Sciences IT Coalition (May 31, 2012)

Speaker, “Mind the Gap: Fixing Problems with Chain of Title From Inventor to University,” AUTM 2012 Annual Meeting (March 15, 2012)

Moot Court Appellate Counsel, “The Case of the Snake-bit University: Inventorship and How Far Does a License Go?,” AUTM 2012 Annual Meeting (March 14, 2012)

Speaker, “Becoming Strategic,” Chinese Academy of Sciences and Tsinghua University Law School (December 2011)

Speaker, “From Lab to Market with Patents,” Larta Institute (October 27, 2011)

Speaker, “How Patent Reform Will Affect Your Office,” Association of University Technology Managers (AUTM) (October 26, 2011)

Speaker, “Opportunities and Challenges in Implementing an International Business Strategy“ (October 21, 2011)

Speaker, “Venture Services for Technology Companies – A Tale of Two Clients, “Larta Institute (June 7, 2011)

Speaker, “Intellectual Property – Beyond Patents,” Larta Institute (November 18, 2010)

Speaker, “The Role of Pro Bono IP in Developing Countries,” Public Interest Intellectual Property Advisors (PIIPA) (October 28, 2010)

Speaker, Panel on “IP Freedom with the National Partners Initiative of the Consultative Group on International Agricultural Research,” at Venable in conjunction with PIIPA (June 18, 2010)

Speaker, “Global IP Management Course,” Franklin Pierce Law Center (June 14-15, 2010)

Speaker, “Building Vaccine Capacity in Developing Countries,” 2010 BIO International Convention (May 4, 2010)

Speaker, “IP Nation – Economic Development Through Intellectual Property,” ICAP Ocean Tomo IP Think Tank & Live Auction (March 24, 2010)

Speaker, U.S. Department of State Foreign Service Institute (July 7, 2009)

Speaker, “Anti-Biopiracy Restrictions on Patenting and Use of Genetic Resources,” BIO International Convention 2009 (May 21, 2009)

Speaker, “Equity and Commercial Rights for Genetic Resources” (April 29, 2009)

Speaker, 2008 Bio International Convention (June 17-20, 2008)

Speaker, Global Intellectual Property Management (May 27-31, 2008)

Speaker, “Changing Horizons,” Association of University Technical Managers (AUTM) 2008 Annual Meeting (March 1, 2008)

Speaker, Maximizing Pharmaceutical Patent Life Cycles (October 23-24, 2006)

Speaker, “Biodiversity Access and Benefit Sharing Agreements — Why? Because It’s the Law!” Bioprospecting: Business Law and Ethics, BIO Biotechnology Industry Organization Annual International Convention (Philadelphia, June 22, 2005)

Moderator, “Winning the Game: Public Funds for Biotech Companies,” BIO Biotechnology Industry Organization Annual International Convention (Philadelphia, June 21, 2005)

Panelist, International Intellectual Property Rights, American Society of Association Executives International Section (Washington DC, May 3, 2005)

Speaker, “Feasibility Of National Disclosure Of Origin Requirements,” Disclosure Requirements: Incorporating the CBD Principles in the TRIPS Agreement on the Road to Hong Kong, WTO Public Symposium, “WTO After 10 Years: Global Problems and Multilateral Solutions” (Geneva, Switzerland, April 21, 2005)

Speaker, “Cultivating our Garden: Promoting Environmental Technology with Intellectual Property,” Environmental Technology and Innovation: Partners for our Future (Temple University, Philadelphia, February 24, 2005)

Panelist, “Biotechnology, Genetic Resources, and Intellectual Property,” The United States and the Convention on Biological Diversity Conference, DC Bar and George Washington University Law School (Washington DC, December 1, 2004)

Panelist, Workshop on Dealmaking and Intellectual Property Management for Public Interest, Initiative on Public Private Partnerships for Health (Bethesda, MD, November 29-30, 2004)

Speaker, “Intellectual Property: Yours, Mine, and Ours,” National Institutes of Health Small Business Innovative Research/Small Technology Transfer (SBIR/STTR) Conference (Bethesda, MD, June 23, 2004)

Moderator, “From Product to Commercialization,” The Business of Drug Development, TechLaw (Toronto, April 30, 2004)

Speaker, “International Practice Considerations,” Conference on the Creation and Maintenance of, and Public Interest Advocacy by, Intellectual Property Law Clinics, American University (Washington, DC, March 21, 2004)

Teacher, Public Interest Intellectual Property Advisors and International Cooperative Biodiversity Groups, Developing Research Access and Benefit-Sharing Agreements, NIH Fogarty International Center ICBG Workshop (Bethesda, MD, December 16-17, 2003)

Speaker, “Strategies to Maximize Your Product’s Value: Planning Your Intellectual Property Portfolio,” Mid-Atlantic BIO/MED Conference (Baltimore, MD, December 3, 2003)

Panelist, “Science and Society: The Life of Galileo,” Studio Theater and American Association for the Advancement of Science (Washington, DC, November 9, 2003)

Speaker, “Generic Drug Companies: Competing at Boundaries of Time and Geography,” Intellectual Property and International Public Health Conference, Georgetown University (Washington, DC, October 7, 2003)

Keynote, “Intellectual Property Management: Why, When, What & How,” US-Korea BioBusiness & Partnering Forum (Gaithersburg, MD, August 5, 2003)

Speaker, 5th Annual NIH SBIR/STTR Conference (June 2-3, 2003)

Speaker, “Intellectual Property: Why, When, What & How,” National Institutes of Health Small Business Innovative Research/Small Technology Transfer (SBIR/STTR) Conference (Bethesda, MD, June 3, 2003)

Interviewed and quoted by Fox News Channel (Shepard Smith 6/2/03), Morning Edition (NPR), Time Magazine (http://www.time.com/time/magazine/archive/1995/950925/950925.science.html), Salt Lake Tribune, Cleveland Plain Dealer, The Guardian, etc.

Panelist, AAAS-SIPPI Project Planning Meetings (American Association for the Advancement of Science – Science and Intellectual Property in the Public Interest), Washington DC, “Patenting Criteria and Scope” (June 6, 2003) and “Exploring Options for Establishing a Research Exemption” (April 24, 2003)

Speaker, “Answering the Call: Public Interest Intellectual Property Advisors,” Biodiversity & Biotechnology Conference, Washington University School of Law (St. Louis, MO, April 4-6, 2003) http://law.wustl.edu/centeris/Confpapers/Gollin.html

Speaker, “Sustainable Access to Genetic Resources,” Management of Intellectual Property in Plant Science in the 21^st Century, CropLife International Workshop (Geneva Switzerland, March 20, 2003)

Panelist, “The U.S. Patent System and Developing Country Access to Biotechnology,” Resources for the Future and Stanford University Center for Environmental Science and Policy (Palo Alto, California, October 27-29, 2002)

Moderator, “Legal Trends in IP,” Maryland BioForum, Technology Council of Maryland (Baltimore, MD, October 22, 2002)

Speaker, “Conflicts and the Public Interest in Biotechnology Patents, Generic Drugs, Compulsory Licensing, and other Intellectual Property Tools for Improving Access to Medicine,” University of Baltimore School of Law 3rd Annual Current Events Symposium on Intellectual Property Law and Practice (Baltimore, MD, March 9, 2002)

Panelist, “Roundtable Discussion on the Convention on Biological Diversity,” Defenders of Wildlife (Washington, DC February 26, 2002)

Participant, Bellagio Conference, Management of Intellectual Property for Health Research and Development, Rockefeller Foundation (Bellagio, Italy, November 5-8, 2001)

Speaker, “Creative Options For Enhancing Pharmaceutical Access Using Intellectual Property,” Global Forum 5, The 10/90 Gap In Health Research (Geneva, Switzerland, October 9-12, 2001

Teacher, Global Biodiversity Institute East African Training Course on Biodiversity, Biotechnology and Law (Dar Es Salaam, Tanzania, August 2001)

Speaker, “Generic Drugs, Compulsory Licensing, and other Intellectual Property Tools for Improving Access to Medicine,” Quaker House (Geneva, Switzerland, May 23, 2001)

Moderator, “Emerging Issues for Bioscience Companies,” Venable Bioscience Seminar Series, (Bethesda, MD, October 2000, March 6, 2001)

Speaker, “Should Patent Law Be Used To Regulate Biotechnology?”, paper presented to Spoletoscienza 2000, Fondazione Sigma-Tau, Spoleto Festival (Spoleto, Italy, July 9, 2000)

Speaker, “Animal, Vegetable, Or Mineral? Twenty Questions You Should Ask Before Bioprospecting,” Information, Technology, and Partnerships: Natural History Collections in the New Millennium, Association of Systematics Collections Annual Meeting (Baltimore, MD, May 15, 2000)

Panelist, “Intellectual Property: How Not to Get Burned,” The President’s Forum of MetroWashington, The Entrepreneurship Institute (Falls Church, VA, November 18, 1999)

Plenary speaker, “Intellectual Property and Traditional Medicine,” International Conference on Ethnomedicine and Drug Development (Silver Spring, MD, November 3-5, 1999)

Speaker, “Intellectual Property and Biodiversity Prospecting: Legal and Social Aspects of Protection for Plants and Plant Products,” ATCC 17th Annual Biotech Patent & Licensing Forum (Herndon, VA, September 23 – 26, 1999)

Speaker, “Intellectual Property Rights and Biological and Cultural Diversity,” Intellectual Property, Science, and Human Rights, AAAS Committee on Scientific Freedom and Responsibility (Washington, DC, September 14, 1999)

Teacher, “Managing Intellectual Property,” GBDI/ICIPE East Africa Biotechnology and the Law Training Course (Nairobi, Kenya, August 13-14, 1999)

Speaker, “Protecting Your Company’s Intellectual Property,” Venable Labor and Employment Law Seminar (Baltimore, MD, April 1999)

Speaker, “Intellectual Property Rights and Biodiversity,” Association of University Technology Managers Annual Conference (San Diego, CA, March 6, 1999)

Speaker, “New Opportunities for Using Intellectual Property Rights to Protect Products and Share Benefits from Biodiversity,” presentation to the Biotrade Initiative’s “Bio- Partnerships for Sustainable Development: Commercialization and the Bio-Industry Challenge” conference, United Nations Conference on Trade and Development Partners for Development Summit (Lyon, France, November 10-12, 1998)

Moderator and speaker, “Intellectual Property and Tibetan Medicine,” First International Congress on Tibetan Medicine, George Washington University Medical School (Washington, DC, November 7-9, 1998)

Speaker, “How to Manage Intellectual Property in Dealing with Africa,” International Society of African Scientists, 13th Annual International Technical Conference, “Biotechnology and Biodiversity: A Challenge for the Development of Agricultural, Bio- Medical and Pharmaceutical Sectors in Africa and the Caribbean (Wilmington, DE, August 14, 1998)

Speaker, “Inventions and Patents: Solutions to Problems in Frontline Healthcare,” Frontline Healthcare Workers Safety Conference (Washington, DC, August 11, 1998)

Keynote Speaker, “The Convention on Biological Diversity and the Changing Legal Environment for Natural Products Research,” Presentation to the American Society of Pharmacognosy, Annual Meeting, “Special Workshop on Principles, Contracts, and Collaborations: ICBG Experiences with Intellectual Property and Benefit Sharing in Biodiversity Prospecting Research, “(Orlando, FL, July 19, 1998)

Participant, “Intellectual Property Rights III Global Genetic Resources: Access and Property Rights Workshop” (Washington, DC June 4-6, 1997) (CSSA publication 1998)

Moderator and speaker, “Biodiversity Treaty Impact on Licensing,” Association of University Technology Managers Annual Conference (San Francisco, CA, February 22, 1997)

Lecturer, “The Federal Technology Transfer Act: Licensing Biotechnology Research,” Foundation for Advanced Education in the Sciences (Rockville, MD, March 1996)

Keynote speaker, “Medicinal Plants Workshop,” Natural Resources Management and Protection Project (Belmopan, Belize, March 5, 1996)

Lecturer on the role of intellectual property rights in conserving biodiversity, Environmental Policy and Regulation, International Law Institute (Washington, DC, 1994, 1995)

Moderator, “GATT and Technology Companies,” Suburban Maryland Technology Council (Shady Grove, MD, 1995)

Moderator, “Government Contracting for High Technology Companies,” Suburban Maryland Technology Council (Shady Grove, MD, 1994)

Panelist, Rene Dubos Center for Human Environments Forum, World Energy to the Year 2020, (New York, NY, May 1994)

Participant, First International Forum, From the Forest to Society — A New Costa Rican Model for Development in Alliance With Nature (San Jose, Costa Rica, May 9, 1994)

Speaker, Seventh Annual Hunger Conference (Brown University, Providence RI, April 14, 1994)

Speaker, Conference on The Greening of Technology Transfer: Protection of the Environment and Intellectual Property (Franklin Pierce Law School, Concord NH, April 8-9, 1994)

Rapporteur, Industrial Development Workshop, Rene Dubos Center for Human Environments Forum on Trade and Sustainable Development (New York, NY, May 1993)

Panelist, Energy Workshop, Rene Dubos Center for Human Environments Environmental Literacy Summit (New York, NY, May 1992)

Panelist, Rainforest Alliance Workshop on Rainforest Pharmaceuticals (New York, NY, April 1991)

Speaker, Center for Global Change Conference on New Technologies, Business Opportunities, and Strategies for Reducing U.S. Greenhouse Gas Emissions (Washington, DC, June 1990)

Speaker, Environmental Dispute Resolution, Science and Morality Series, Zen Mountain Monastery (Mt. Tremper, NY, Nov. 1988)

LANGUAGES

German

Swiss-German

French

CLIENT REPRESENTATION

Patents

• Prosecuted patents regarding, e.g., enzyme catalysis, recombinant DNA, artificial sweeteners, vaccines, pharmaceutical compounds and synthesis, bioelectronic monitoring, radioisotope detection, bioremediation, animal nutritional supplements, natural products, ultrasound contrast agents, chromatography, lab-on-a-chip systems, immunoassays, purification of plant compounds, hybridizing grain crops, autoimmune disease treatment, insertable medical devices and coatings, gene therapy delivery systems, cosmetic compositions, remote fluid density measurement, environmental technologies, condensation sensors, industrial wear monitor, Internet methods, homeland security, insect-based protein production
• Appealed adverse judgment against pharmaceutical company to the Federal Circuit, directed subsequent proceedings, and negotiated favorable settlement
• Revoked drug patent of a competitor in European Patent Office opposition
• Rendered patent clearance opinions regarding, e.g., steroids, anesthetics, soil remediation, photovoltaics, cameras, and plastics manufacturing
• Litigated patents for pharmaceuticals, videocassettes, hyaluronic acid, jet engine blade coatings, carpet dying machinery
• Handled interference on behalf of foreign junior party company
• Co-ordinated and implemented strategies for international patent protection
• Other technical experience includes AIDS virology, natural products research, biological assays and screens, biodiversity prospecting, botanical gardens, pollution prevention and clean-up, steroid compositions, cancer vaccines, artificial sweeteners, anesthetics, alloys, machinery
• Prepared complex patent clearance opinions on five patents for 10 different companies in or under threat of litigation

Intellectual Property Management/Technology Transfer

• Built and managed worldwide intellectual property portfolios for a drug company, a medical device company, and a biotechnology instrumentation company, including pharmaceutical product launch.
• Prepared countless assignments, licenses, and employment agreements allocating ownership, control, and royalties for, e.g., patents, biological materials, trademarks, and publishing rights
• Negotiated confidential disclosure agreements
• Conducted due diligence for corporate acquisitions and investments
• Conducted audits of intellectual property for International Agricultural Reseach Centers of the Consultative Group on International Agricultural Research
• Advised Royal Botanical Gardens, Kew on biological material acquisition and supply agreements
• Negotiated complex, multinational biodiversity prospecting agreements in South America, Africa, and the South Pacific, involving access to genetic resources, biological material transfer, intellectual property licensing, and benefit sharing
• Advised Belize governmental agencies on strategies for conservation and development of medicinal plants
• Advised trade association about data protection issues for product approval
• Negotiated complex set of inter-institutional agreements between two universities and licensee

Trademarks and Unfair Competition

• Resolved trademark lawsuit and opposition
• Managed trademark portfolio for multinational pharmaceutical company, protein production company, and space tourism company
• Orchestrated successful trademark policing programs for health care industry clients
• Guided generic suppliers through trade dress disputes with national brands
• Resolved dispute over internet domain name

Copyrights

• Defended brokerage house in suit involving copyrighted educational materials, converting lawsuit into successful business relationship
• Negotiated multimedia rights for environmental encyclopedia