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Barton W. Giddings, Ph.D

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11/18/2010 - Bilski Round Two: What Is Patentable in Light of the Supreme Court's Recent Decision - Presentation Materials (PDF)

Barton W. Giddings, Ph.D

ExperienceBart Giddings counsels biotechnology, pharmaceutical, and medical device companies on intellectual property matters, including the strategic creation and management of patent portfolios. He has significant experience with patent issues unique to biopharmaceuticals and small molecule drug products, genetic technology and medical diagnostic testing. His practice includes transactions involving assets of life science companies, competitive intelligence and Hatch-Waxman issues. Bart was previously Chief Patent Counsel at NPS Pharmaceuticals.

Representative WorkPatent Portfolio Creation and ManagementManaged the development and prosecution of a biopharmaceutical client's portfolio of more than 1,000 issued and pending U.S. and foreign patents and applications. Prosecuted several hundred U.S. and foreign patent applications to issuance. Bart has conducted or supervised numerous successful interviews with U.S. and European examiners that resulted in allowance. Managed the intellectual property aspects of several collaborations with major pharmaceutical companies and developed strategies for protecting IP resulting from such collaborations. Directed the filing of applications for patent term extension for an FDA-approved product. Supervised the filing of applications for supplementary protection certificates for two approved drug products.Intellectual Property Transactions Negotiated, drafted and conducted due diligence for a variety of agreements, including intellectual property license and sales agreements with up-front payments totaling more than $100 million. Directed the intellectual property aspects of royalty monetization deals worth more than $300 million.Intellectual Property Analysis Advised clients on patent infringement litigation matters, including issues specific to Hatch-Waxman litigation. Monitored competitors' patents for clients and analyzed alternatives for challenging granted patents, including reexamination, litigation and European oppositions. Performed exclusivity and freedom to operate analyses for clients, including clearance searches for marketed medical products.Professional Honors & ActivitiesSelected as one of "America's Leading Lawyers for Business" (Utah) by (currently: Intellectual Property), 2009-2012Listed in Best Lawyers in America® (currently: Patent Law), 2009-2013AV Preeminent Peer Review Rated with Martindale-Hubbell®Listed in Mountain States ®, 2007-2010 Utah Business magazine's "Utah Legal Elite-Intellectual Property," 2006-2011 Adjunct professor, University of Utah, S.J. Quinney College of Law, 2003-2010 Chair, Intellectual Property Section, Utah State Bar, 2005-2006 Board of Trustees, Utah Life Sciences Association, 2000-2002 and 2005-2006 PresentationsCo-Presenter, "Bilski Round Two: What Is Patentable in Light of the Supreme Court's Recent Decision?," Stoel Rives LLP, Salt Lake City, Utah, Nov. 18, 2010

Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Bonita Springs, Florida, 2010Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Las Vegas, Nevada, 2009Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Orlando, Florida, 2009 "Hatch-Waxman, Drug Prices, and an Aging America," Utah State Bar Annual Convention, Sun Valley, Idaho, 2007 "The Master Class on New Strategies for Obtaining Pharmaceutical Patent Extensions," American Conference Institute's Maximizing Pharmaceutical Patent Life Cycles, San Francisco, California, 2007 "Building and Managing Patent Portfolios in the Life Sciences," Henry Stewart conference, San Francisco, California, 2005 "New Developments in the Law on Patent Term Extensions," Henry Stewart conference, Latest Thinking on Attacking/Defending Patent Rights in the U.S. Pharmaceutical Market, Washington, D.C., 2004 "Intellectual Property in Collaborations What is Prior Art Under 102(e) AIPA Changes," American Intellectual Property Law Association's Corporate Practice Seminar, Boston, Massachusetts, 2002 Civic ActivitiesMassachusetts Institute of Technology Educational Council, 2002-2011University of Utah National Honors Advisory Board, 2001-2011 EducationStanford Law School, J.D., 1997 Massachusetts Institute of Technology, Ph.D., Biology, 1994 University of Utah, B.S., Mathematics, 1987, magna cum laude AdmissionsUtah

U.S. Court of Appeals for the Federal Circuit

U.S. District Court for the District of Utah

U.S. Patent and Trademark Office

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