Business Management .Net Experience San Diego

RICHARD SAN PIETRO

***** ********** **. 858-***-****

San Diego, CA 92124 **********@*********.***

Admitted in California, New York, and New Jersey

Registered to practice with the USPTO

Objective: A position as a patent attorney requiring advanced intellectual property expertise

necessary to effectively and efficiently manage the Company’s IP affairs. Partnership with

business and research personnel will be sought in implementing a global IP strategy.

Responsibilities may include performance and/or supervision of U.S., PCT, and foreign patent

prosecution, supervision of other attorneys or IP professionals, monitoring of the competitive

landscape to track competitors’ IP, due diligence studies, infringement and validity opinions, and IP

licensing. Areas of technical expertise include, but are not limited to, protein/peptide chemistry,

proteomics, immunology, monoclonal antibodies, molecular biology assays, cloning methods,

genomics, targeted therapeutics, assay devices, small molecules, biologics, and microbiological

media.

EDUCATION

J.D., Rutgers School of Law, Newark, NJ - 1996

Master of Science, Biochemistry, Rutgers University

The Graduate School, New Brunswick, NJ – 1992

Bachelor of Science, Biochemistry, Rutgers University

Cook College, New Brunswick, NJ – 1983

PROFESSIONAL EXPERIENCE

ACUITY INTELLECTUAL PROPERTY LAW, San Diego, CA

Of Counsel Present

• Counsel client companies on patent prosecution and other intellectual property matters.

AMYLIN PHARMACEUTICALS, INC., San Diego, CA 2007 – 2010

Senior Patent Counsel

Counsel, Intellectual Property

• Performed complete prosecution on an international portfolio of patent applications,

i ncluding drafting original patent applications, replying to Office Actions, wri ting Appeal

B r iefs, and managing and advising foreign counsel.

• Worked closely with scientists to identify new discoveries from laboratories and prepare

and file new patent applications.

• Provided slide presentations to R&D personnel on patent matters to educate scientific

corp.

• Performed freedom to operate studies.

• Assisted in evaluating reexamination applications.

• Reviewed licensing agreements and counseled business development personnel.

• Coordinated informative legal seminars for attorneys, patent agents, and paralegals.

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AZURE INSTITUTE, San Diego, CA 2004 – 2007

(an R&D affiliate of ACON Laboratories, Inc.)

Director, Intellectual Property

• Created and managed international patent estate in diagnostic device area, including full

p rosecution and management of foreign counsel handling cases before foreign patent

offices.

• Supervised and t rained a team of six employees in intellectual property matters including

performance of freedom to operate studies.

• Served as in-house legal support for conduct of major li tigation matter.

• Assisted Company in IP matters relating to a major sale of Company assets with respect to

a l itigation settlement agreement.

• Reviewed and assisted in negotiating patent licensing agreements (both in-licensed and

out-licensed) and major asset t ransfer agreement, wrote and negotiated t rademark co-

existence agreements and non-disclosure agreements.

• Assisted in drafting reexamination application as part of litigation strategy.

• Drafted legal opinions relating to non-infringement and invalidity of patents; reviewed and

p rovided legal commentary on opinions drafted by outside counsel.

• Created fi rst complete documentation and description of Company’s IP assets.

• Managed and developed t rademark estate to advance brand development and Company’s

business objectives.

FOLEY & LARDNER, San Diego, CA 2001 – 2004

Associate Attorney

• Managed international portfolio of patent applications including writ ing and filing of all

new applications, responding to Patent Office communications and communications with

foreign associates, responsible for full prosecution of pending applications in diverse

technology areas of biotechnology, biology, small molecule chemistry, clinical drug

candidates, and diagnostic devices.

• Outlined intellectual property strategy for client companies; met with venture capitalists

to describe asset portfolio and assist in obtaining venture funding.

• Responsible for all aspects of client counseling and managing the client relationship,

i ncluding freedom to operate analyses, validity and infringement opinions, and t rade secret

p rotection.

• Represented clients at Examiner Interviews at the U.S. Patent & Trademark Office.

• Worked in additional technology areas of pharmaceutical compositions, cloning methods,

genomics, targeted therapeutics, biological/biochemical assay devices, microbiological

media, proteomics, drug discovery, molecular biology assays, and t reatment methods.

R IC HARD SAN P IETRO r *********@*********.*** Page Three

HOWREY SIMON ARNOLD & WHITE, San Diego, CA 2000 – 2001

Associate Attorney

• Focused on management and prosecution of patent portfolios in biotechnology and life

science areas.

• Established excellent record for securing allowances of patents of appropriate scope within

short time frames.

LYON & LYON, San Diego, CA 1997 – 2000

Associate Attorney

• Focused on patent litigation and prosecution in the areas of biotechnology and

b iochemistry; wrote opinion letters on non-inf ringement and invalidity and other aspects of

client counseling.

SCIENTIFIC EXPERIENCE

R.W. JOHNSON PHARMACEUTICAL RESEARCH INSTITUTE 1993 – 1997

(a Johnson & Johnson Company, Raritan, NJ)

Research Associate

• Protein and enzyme purification, peptide chemistry, chromatography, cell culture;

developed methods for assaying enzymes; performed western blotting assays to determine

t he identity of protein contaminants; wrote SOPs for use in GMP environment.

ENZON, INC., South Plainfield, NJ 1992 – 1993

Research Associate

• Purification of peptides via HPLC and by ion-exchange chromatography; peptide synthesis

using FMOC chemistry; peptide sequencing using Edman degradation; performed

enzymatic degradation of alkylated proteins for peptide mapping studies.

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