Administrative Assistant Management

Jane C. Oswecki

*** ********* ******, *******, ** 02478

860-***-**** ********@*****.***

Summary

Experienced chemical IP attorney with both extensive global corporate and

US Patent Office (Primary Examiner, Organic Chemistry) background; research

experience, and MS degrees in Organic Chemistry and Biotechnology.

Particular strengths in small molecule patent application prosecution and

challenges to branded products, due diligence for business development, and

IP for research and discovery, clinical, regulatory, promotions and

commercial arenas. Established new patent/IP department and supervised

professional and administrative staff. Represented corporate IP interests

in licensing collaborations. With IT department, created global electronic

laboratory notebook system.

Highlights

Operational: IP strategies for global protection, branded products

Multi-department coordinated interactions

Patent application drafting, global patent

prosecution for small molecules

Research and opinions: patentability, validity, freedom to

operate and clearance

Publications reviews

European Opposition, Hatch-Waxman litigation

(in-house team)

Leadership: Managed IP departments

IP due diligence for Business Development

Senior Management advisor

Implementation of strategic IP initiatives

Relationship Collaborations with pharmaceutical companies

Management: Financial management for programs and department

Training programs for new employees, scientists

Program IP alliance management

Experience

Biogen Idec Inc., Cambridge, MA 2009-2010

Associate General Counsel for IP

. Created corporate IP strategy for small molecule neuro-therapeutic area

in a business-focused corporate model.

. Formulated and implemented IP strategy for small molecule projects in

international company setting; interfaced with multidisciplinary groups

in bringing products to global markets.

. Managed IP portfolio, oversaw patent application filings in U.S. and rest

of world by instruction to outside law firms.

. Recognized and avoided potential patent infringement for FDA Phase III

program by taking appropriate action with senior management.

. Trimmed patent application filings in projects no longer of active

interest to corporation with resultant savings of about $75K.

. Saved approximately $100K/year by amending license agreement and

returning patents to licensor university.

. Reviewed and approved research and clinical publications, posters and

abstracts for external presentations.

. Performed due diligence for Business Development opportunities; worked

with corporate legal colleagues on transactional matters.

. Presented IP status updates for assigned projects at meetings of Senior

Management R&D Committee, Joint Development Research, and Therapeutic

Areas.

EMD Serono Research Institute, Inc., Rockland, MA 2007-2009

Senior Patent Attorney

. Chosen as interim head of U.S. IP Department, reported to Merck KGaA,

Darmstadt, Germany; interfaced and coordinated work with IP departments

in Geneva, Switzerland and Darmstadt. Generated department budget.

. Served as member of Senior Management Team.

. Managed one patent agent, one European Patent Attorney, two paralegals,

and one IP administrative assistant.

. With IT department, created global electronic laboratory notebook system

and related SOPs.

. Drafted and prosecuted small molecule patent applications; instructed and

oversaw work of outside counsel; filed U.S. patent applications for

colleagues in Germany, Switzerland and Israel.

. Reviewed and approved publications, posters, abstracts for presentations

external to the corporation.

. Reviewed FDA Phase IV clinical trial agreements with NIH and independent

investigators.

. Oversaw minor litigation-related matters; served as IP resource for

Compliance Department.

. Performed due diligence for Business Development opportunities, reviewed

related licenses.

. Acted as corporate representative for Government Affairs Department

involved in PharmaRx, BIO, state and local government departments for

legislation affecting pharmaceutical companies.

Sepracor Inc., Marlborough, MA 2006-2007

Senior Patent Counsel

. Counseled research scientists with respect to chemical patent issues;

oversaw patent drafting and prosecution by four to six outside IP law

firms and their foreign associates for patent applications filed

globally.

. Handled all aspects of small molecule IP for discovery, business

development, clinical, regulatory, promotions and sales for neurologic

medical indications in mid-sized specialty pharmaceutical company.

. Managed IP aspects of >$20M collaboration with smaller ex-U.S. company.

. Performed due diligence on IP portfolios of companies in conjunction with

business development for in-licensing opportunities.

. Managed transactional matters including confidentiality, consulting

contracts, material transfer, licensing, and clinical independent

investigator contracts.

. Reviewed presentations, publications, abstracts and posters for external

promotions.

. Worked closely with outside counsel on litigation matters (Hatch-Waxman

Act, "Paragraph IV" European oppositions and revocation hearings)

involving challenges by manufacturers of generic drug products.

. Acted as resource for company-wide copyright issues and initiated a

program for retention of electronic business records.

Idenix Pharmaceuticals, Inc. (formerly Novirio), Cambridge, MA 2002-

2006

IP Counsel

First in-house Patent Counsel; created IP area of legal department

including implementation of a docketing and filing systems. Worked with

General Counsel to prepare licensing, confidentiality, and material

transfer agreements.

. Searched prior art, oversaw drafting and prosecution of global patent

applications for hepatitis and HIV small molecule therapies.

. Drafted patentability, validity, infringement, freedom to operate and

clearance opinions.

. Counseled scientists, collaborators and coordinated IP at corporate

sites in U.S., France, and Italy to assess potential inventions;

initiated scientific invention disclosure record-keeping.

. Worked with outside counsel to collect information in preparation for

potential litigation matters.

. Coordinated patent application filings and prosecution with outside

counsel for products TYZEKATM and Valopicitabine for hepatitis B

treatment, Valtorcitabine for hepatitis C treatment; and early stage

anti-HIV small molecules.

. Presented IP overview and strategies at corporate scientific and

business/marketing meetings.

. Worked with business development to evaluate potential licensing

opportunities, reviewed IP portions of transactional agreements for

business development opportunities.

. Interacted with patent counsel at collaboration partner, Novartis, in

area of infectious diseases.

. IPO related: prepared patent factors and risk sections of Securities

and Exchange Commission registration statement; coordinated and

presented IP portfolio materials, engaged in discussions with in-house

and outside counsels from four large pharma companies during "due

diligence" related to potential partnership or collaboration

opportunities.

. Oversaw corporate trademark counsel, Novartis (Basel) trademark counsel,

and Idenix marketing department to obtain umbrella and specific

trademarks, including TYZEKATM, for first marketed product.

. Worked with regulatory staff to supply patent-related information for

IND and NDA filings at the U.S. FDA.

CuraGen Corporation, New Haven, CT 2001-2002

Patent Attorney

. Interacted directly with staff scientists.

. Prepared patent applications on gene splices.

. Served as IP representative for collaboration with Bayer

Corporation, West Haven, CT, on obesity and diabetes

programs.

. Served as CuraGen Corporation Representative on U.S. Mail

and Greater New Haven, CT, Business Partners group.

U.S. Patent and Trademark Office, Arlington, VA 1996-2001

Primary Examiner, Organic Chemistry (now Art Unit 1626)

. Obtained a rating of "outstanding" each year.

. Main areas of examination: small molecule medicinal

chemistry, pharmaceuticals, and agrochemicals.

Education

Juris Doctor, Western New England College - School of Law, Springfield, MA

Master of Science, Organic Chemistry, St. Joseph College, West Hartford, CT

Master of Science, Biotechnology, John Hopkins University, Baltimore, MD

Basic Medical Sciences, (2 years) University of Connecticut Health Center,

Farmington, CT

Bachelor of Arts, Biology, Case Western Reserve University, Cleveland, OH

Admissions To Practice

U.S. Patent and Trademark Office, 1995

U.S. Circuit Court of Appeals for the First Circuit, 1995; U.S. Circuit

Court of Appeals for the Second Circuit, 1995

U.S. District Court, District of Massachusetts, 1994; U.S. District Court,

District of Connecticut, 1992

State of Connecticut, 1992; Commonwealth of Massachusetts, 1994

Other Relevant Experience

Mentor, BIO2005 Indigenous Students Program, Philadelphia, PA (2005)

. Counseled two Ph.D. candidate graduate students for one week prior to

BIO2005 meetings.

Delegate, First Intellectual Property Law and Public Policy Delegation to

People's Republic of China

. Led by Q. Todd Dickinson, former U.S. Patent and Trademark Office

Commissioner; AIPLA/People to People Ambassador Programs (2004)

Presenter and Panel Member, Licensing Executives Society (LES), "Business

Development Basics for Professionals in the Life Sciences", Washington, DC

(2003)

Publications

C.F. Hinz, Jr., M.D. and Jane F. Chickosky, "Lymphocyte Cytotoxicity for

Human Erythrocytes." University of Connecticut, Hartford, CT

. Presented at the Annual Leukocyte Culture Conference, Orcas Islands, WA

Carl F. Hinz, Jr., M.D. and Jane F. Chickosky, "Factors Influencing the

Stimulation of Human Lymphocytes by Antigens During Culture in Vitro -

Conditions for Lymphocyte Stimulation." Internal Archives of Immunology.

Oswecki, J.C. "DNA Analysis: Untwisting the Helix for Forensics."

. Awarded Honorable Mention in writing competition for the High Technology

Law Journal, University of California at Berkeley, 1990.

Professional Organizations

Member, Patent and Trademark Office Society

PTOS Legislative Committee 1991-2001

Boston Patent Law Association

American Intellectual Property Law Association

Former member, National Association for the Advancement of Science,

American Bar Association, Massachusetts Bar Association, and Connecticut

Bar Association

Seminars / Training

Association of Corporate Counsel Patent Seminars

Mini-MBA, Boston University (2010)

U.S. Patent and Trademark Office Patent Academy

Database Proficiency: Chemical Abstracts, Medline, Biosis, STN Structure

Searches, CAS Registry, CAS React, SciFinder, ChemDraw, Dialog, NIH and NCI

PubMed and Entrez databases

Legal Seminars: regular attendance at AIPLA conferences, webinars, and

Boston Patent Law programs

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