Experience Years Project Intellectual Property
|CHERYL A. LILJESTRAND, JD, PHD
PHONE: (281) ***-**** HOUSTON, TX firstname.lastname@example.org
Intellectual Property Attorney with 10 years experience in biotechnology and pharmaceutical patent practice, including 6 years as sole in-house intellectual property counsel as well as 4 years in a premiere law firm. Previous experience as a Biotech patent Examiner. PhD in molecular biology and microbiology.
StipkalaLaw, LLC, Charleston, South Carolina February 2009-Present
Consultant – Provide comprehensive advice to small biotech companies regarding their patent portfolios, laboratory notebook maintenance, scientific invention disclosures, freedom to operate, and other IP related issues.
Genentech, Inc., S. San Francisco, CA August 2007-December 2007
Transition Team Intellectual Property Counsel: Upon completion of the merger between Tanox, Inc. and Genentech, joined the transition team to transfer all intellectual property assets.
Tanox, Inc., Houston, TX March 2001-August 2007
Director of Intellectual Property, February 2003-August 2007
Intellectual Property Counsel, 2001-2003
• Prepared all patent applications, performed all US patent prosecution and supervised all foreign filings/prosecution by foreign associates (~ 50 Families of Applications);
• Performed infringement and validity analyses and provided freedom to operate opinions;
• Performed IP due diligence in connection with potential acquisitions and in-licensed technology;
• Provided IP advice to all project teams for both clinical programs and preclinical research programs;
• Performed due diligence and provided IP advice to VP of Research for all newly proposed targets;
• Conducted training on patent requirements, lab notebook policy and procedures, invention disclosure requirements and other IP related subjects;
• Prepared/negotiated material transfer agreements and sponsored research agreements;
• Performed and maintained database searches for patents related to competitive technologies.
• Successfully prosecuted 50 issued patents, including 20 US patents;
• Drafted over 50 patent applications;
• Constructed new patent database using commercial software;
• Drafted and implemented invention disclosure and laboratory notebook procedures.
Finnegan, Henderson, Farabow, Garrett, & Dunner, L.L.P., Washington, DC March 1997-January 2001
Associate, September 1997-January 2001; Student Associate, March-September 1997
• Drafted and prosecuted patent applications in the area of biotechnology, pharmaceuticals, immunology, and microbiology;
• Conducted state of the art searches;
• Prepared non-infringement opinions;
• Participated in litigation mock trial for vaccine technology case.
US Patent and Trademark Office, Arlington, VA March 1996-February 1997
Patent Examiner, Technology Center 1600
• Examined patent applications in the areas of nucleic acid hybridization, sequencing technology and PCR; participated in the new pilot training program developed in Group 1600.
George Washington University, National Law Center
Courses Taken in Intellectual Property: Chemical & Biotech. Patent Practice; Biotech. Patent Policy; Japanese Patent Policy; International Comparative Patent Law (US EPO and JPO); Technology Transfer; Licensing; Fed Circuit Practice; Patent Law; Copy Rights; Trademarks.
Core Law courses completed at Wayne State University Law School, Detroit, MI, 1992-1994
University of Texas Health Science Center, Dallas
Yeast Mitochondrial genetics
Ph.D., Molecular Biology/Microbiology
Texas A&M University, College St., TX
Texas A&M University
Virginia Bar, 1997
District of Columbia Bar, 1998
Texas Bar, 2003
U.S. Patent and Trademark Office, 1999
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