Management Development
Resume:
Julia R. Rosenthal
Berkeley, CA 94705
*********@*****.***
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Current Professional Experience
Tethys Bioscience Inc., Emeryville, CA
Senior Corporate Counsel and Director of Intellectual Property, 2010
Corporate Patent Counsel, 2007 to 2009
Intellectual Property:
. Develop, articulate and deliver IP strategy for active pre-IPO
diagnostics company
. Overall responsibility for patent and trademark portfolio in the
diabetes, cardiometabolic, and osteoporotic fracture disease space
o Manage US and foreign prosecution in complex biomarker and
diagnostic algorithm patent field
o Development of patent strategy for both competitive and
product purposes
o Monitor and revise strategy for new inventions, supervising
and filing applications as appropriate
o Develop extensive competitive intelligence on third party
art; advise management and commercial operations on same
o Develop and review IP strategy and positions in agreements
and current regulatory law including FDA and Orange Book
listings; review and deliver considered advice on same to
management and active business development group
o Additional prosecution and FTO responsibilities in digital
antibody, protein enrichment, and nanoreactor technologies
. Supervision of freedom to operate for new targets and projects
. IP review of scientific publications and public disclosures
. Training and materials on IP for company personnel on
confidentiality, public disclosure, notebook policy and
maintenance, etc.
. Extensive legal and IP review of marketing, promotional, product
and public relations materials for active product launch (white
papers, patient/physician educational materials, press releases,
etc.)
General Legal:
. Overall management and development of growing in-house legal
department; recruiting, budgets, long term planning, infrastructure
development, etc.
. Substantive contract drafting and review on various agreements:
CDAs, service agreements, research collaborations, etc.
. Optimization and regular review of contract technology and
practices
. Monitoring and advice for company lobbying and congressional
contact in preventive healthcare arena
. Extensive legal review and research for company compliance and
regulatory policies including anti-kickback statutes, HIPAA, FDA
matters, etc.
. General compliance advice and oversight on active commercial
activity plans
. In-house litigation management and advice, including discovery and
settlement negotiations; management of outside litigation counsel
Chiron Corporation/Novartis Vaccines and Diagnostics, Emeryville, CA
Corporate Patent Counsel, 2005 to 2007
. Management of large patent portfolio related to vaccines and
vaccine production methods for seasonal and pandemic influenza and
other infectious diseases, vaccine adjuvants, and therapeutic
monoclonal antibodies
. Drafting and filing office action responses for domestic and
foreign patent applications
. Due diligence and freedom to operate analysis on viral and
bacterial vaccines, vaccine adjuvants, monoclonal antibodies
. IP review for public disclosures: papers, presentations, posters,
promotional materials
. IP oversight and advice for transactions including research
collaborations, material transfer agreements, and government
contracts, including large HHS agreements for pandemic flu vaccine
production
Morrison & Foerster LLP, San Francisco, CA
Associate, Patent and Litigation Groups, 2003 to 2005
. Patent application drafting and filing with USPTO
. Drafting and filing office action responses for domestic and
foreign patent applications
. Drafting and filing domestic and foreign Plant Variety Protection
applications
. Litigation support for large patent infringement suit related to
monoclonal antibodies
. Due diligence and freedom to operate analysis of various biotech,
plant, and plant transformation patents
. Legal research and analysis on a variety of litigation and patent
issues
o 2002 Summer Associate, Patent Group
o 2001 Summer Analyst, Litigation Group
Chiron Corporation, Emeryville, CA
Patent Associate Agent, Intellectual Property Group 1998 to 2000
. Assistance in the preparation of patents for new biotechnological
inventions including recombinant proteins, ESTs, vaccine adjuvants
. Extensive and detailed patent and scientific literature analysis
for patentability, freedom-to-operate and licensing studies for
research projects and collaborations
. Patent and scientific literature searching on a variety of
commercial and scientific databases, i.e. Derwent, INPADOC,
ChemSearch, IMSWORLD, Medline, Entrez PubMed
Education
University of California, Berkeley School of Law (Boalt Hall), J.D. May
2003
University of California, Berkeley, A.B., Immunology and Microbiology, May
1987
Professional Associations
California Bar Member
Registered before the U.S. Patent and Trademark Office
. Member, AIPLA
. Member, American Bar Association, Intellectual Property Section
Research Experience
Chiron Corporation, Emeryville, CA
Research Specialist, Vaccine Adjuvant Research Group 1993 - 1998
. Determination of immunological mechanisms for activity of adjuvants
and vaccines for HIV, Herpes simplex, and influenza
. Development and use of ELISA assays for cytokines and other
antigens
. Development of in vitro and in vivo models for immune response to
immunization
. Development of flow cytometry methods for intracellular and surface
staining of immune activation markers
. Data analysis and presentation at national and international
immunology conferences
University of California, Berkeley, School of Optometry
Staff Research Associate, Cystic Fibrosis and Tobacco-Related Disease
Research 1991 - 1993
. Physiological measurements of epithelial membrane transport in
tissues of the retina and respiratory tract
. Characterization of fluid transport defect of cystic fibrosis;
Ussing chamber use and design, voltage clamping, radioactive ion
flux tracing, development of retinal pigment epithelium cell
culture model
Chiron Corporation, Emeryville, CA
Research Associate
Factor VIII (Blood Clotting Factor) Project 1987, Herpes Simplex Vaccine
Project 1987 - 1989
. DNA restriction digests, cloning, radioimmunoassays
. Purification and characterization of recombinant glycoproteins for
vaccine development
Scientific Publications (under Carlson)
Singh M, Carlson J.R., Briones M, Ugozzoli M, Kazzaz J, Barackman J, Ott G,
O'Hagan D., "A comparison of biodegradable microparticles and MF59 as
systemic adjuvants for recombinant gD from HSV-2," Vaccine, (16) 19:1822-7
(1998)
Higgins, D.A., Carlson, J.R., and Van Nest, G.A., "MF59 Enhances the
Immunogenicity of Influenza Vaccine in Both Young and Old Mice," Vaccine,
(14) 6:478 (1996)
Valensi, J. P., Carlson, J.R., Van Nest, G.A., "Systemic Cytokine Profiles
in BALB/c Mice Immunized with Trivalent Influenza Vaccine Containing MF59
Oil Emulsion and Other Advanced Adjuvants," J. of Immunology, 153:4029
(1994)
Burke, R.L., Van Nest, G.A., Carlson, J.R., Gervase, B., Goldbeck, C., Ng,
P., Sanchez-Pescador, L., Stanberry, L., and Ott, G., "Development of
Herpes Simplex Virus Subunit Vaccine," Vaccines 89, Cold Spring Harbor
Laboratory (1989)
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