Mechanical Software
Resume:
Guy (Kevin) Townsend
***** ****** *****, ********, ** 80215
Phone: 609-***-**** E-Mail: *.*****.********@*****.***
www.gkevintownsend.com
Objective: In House Chemical Patent and Licensing Attorney
Summary of Experience: >15 years worldwide chemistry/ biotechnology/biopharma/pharmaceutical/ device/ computer/ patent acquisition, opinions, IP transactions, litigation, and licensing.. More than 10 years experience in house with J&J (Centocor Ortho Biotech/Ortho Clinical Diagnostics/Janssen) and Eli Lilly and more than 10 years in law firms, including Hogan Lovells, Foley and Lardner, & Sterne, Kessler, Goldstein and Fox. I have an IP JD; MS/BS (chemistry, physics, biotech), am admitted to PA Bar (71823), USPTO (34033), and with a waive in pending for CO bar.
• Patent/IP Experience: Independent responsibility for worldwide, US, EU, Japan and Asia Patent Acquisition (searching, patentability, drafting, prosecution, interferences, reexaminations, oppositions, appeals), Legal Opinions (patentability, landscape, freedom to operate, non-infringement & invalidity), Dispute Resolution (mediations, arbitrations, pre-litigation, and Litigation). Experience includes utility, design and plant patents and trademarks, relating to: chemistry, biotechnology, biopharma, pharmaceutical, IT, software, electronics, mechanical, and business methods, including managing in house and outside counsel attorneys, patent agents, and paralegals.
- Prosecuted >2500 applications;
- Drafted >1500 US patent applications;
- Issued >1000 US patents;
- Issued > 2000 worldwide patents;
- >100 major product clearances: product and service patent and exclusivity clearances and extensions;
- Managed >500 WW patent families;
- Conducted >25 EU/Japan oppositions and appeals;
- Conducted >150 US patent appeals;
- Regulatory related IP issues, data exclusivity, patent term extensions;
- Conducted >500 opinions and analyses: validity, infringement, freedom to operate, landscape, patent portfolios, claim analysis, prior art, technologies, products and services, including negotiations, licensing, dispute resolution, litigation, patent sales and licensing, acquisitions, and third party assertions.
- Prosecution Experience, Technologies: representing applicants in USPTO Technology Centers:
- 1600 Biotechnology and Organic Chemistry; 1700 Chemical and Materials Engineering; 2100 Computer Software;
- 2400: Networking, Multiplexing; 2800: Electrical and Optical Systems and Components; 2900 Designs;
- 3600 Electronic Commerce, Power Transmissions, Agriculture; 3700 Mechanical Engineering, Manufacturing and Products..
• Licensing/Transactional/Business Development:
- Conducted >3000 IP related agreements: due diligence, negotiations and drafting, including:
- >100 major product/company (>US$100M)transactional, IP, and technology due diligences, negotiations and agreements;
- Chemistry, biotechnology, biopharma, pharmaceutical, IT, software, electronics, mechanical, and business methods;
- In- and out-licensing and agreements; Research, development, feasibility, collaboration, CROs;
- Licensing and technology transfer; Manufacturing; CMOs; co-manufacturing;
- Marketing, co-marketing, profit sharing; Commercialization and co-promotion;
- Government, military, and consortium; and Institution, academic and commercial.
• Product Portfolio Management:
- Independently managed IP acquisition, defense and enforcement, due diligence, licensing, regulatory, and related agreements and legal aspects, for >50 major product portfolios (>$100M market) in all stages of development, including:
- Multi-billion dollar products, such as J&J’s Stelara™ (ustekinumab), Simponi™ (golimumab), and Remicade™ (infliximab, >$6B annual sales); and Eli Lilly’s Forteo™.
• Litigation/Dispute Resolution:
- >50 major US, EU, and Japan/Asia multi-jurisdictional mediations, arbitrations, litigation set up, litigations, IP and license dispute litigations, preliminary injunctions, and nullity actions;
- >15 EU EPO and Japanese JPO oppositions and appeals; and
- Greatest Accomplishment: Solely drafted, directly managed prosecution and managed the litigation of US patent 7,070,775, asserted by Centocor against Abbott that resulted in a record US$1.67 billion infringement jury verdict against Abbott in the Eastern District of Texas (2:07-CV-00139-TJW, E.D. Texas (Marshall) 2009; WL 3734119; Lexis 102427).
• Scientific Experience: studied physics, chemistry, biochemistry, computer science, and molecular biology in undergraduate and graduate school and then worked 5 years in post-graduate research at the National Institutes of Health.
Experience:
Technology Licensing and Patents Professional Services, Denver, CO; 2009-2011
Principal
- IP and consulting services emphasizing global intellectual property:
- Patent acquisition, opinions, appeals;
- Trademark prosecution, cancellations, and oppositions;
- Transactions, mergers, & acquisitions;
- Business development and due diligence;
- Clearance, validity, & patentability opinions;
- Dispute resolution, appeals & litigation;
- Chemistry, biotechnology, biopharma, pharmaceutical, IT, software, electronics, mechanical, and business methods;
• Temporary position at Faegre & Benson, LLP, Denver, CO 2011;
• Temporary position at Berenbaum Weinshienk PC, Denver CO 2010 – 2011.
Hogan Lovells LLP, New York, NY 2008-2009
Partner
- Representing clients in worldwide intellectual property:
- IP litigation, acquisition, licensing, appeals;
- Transactional, due diligence, licensing;
- Business development & regulatory (ANDA, exclusivity);
- Clearance, validity, & patentability opinions;
- Dispute resolution, appeals & litigation;
- Chemistry, biotechnology, biopharma, pharmaceutical, IT, software, electronics, mechanical, and business methods;
- Managed attorneys, patent agents, paralegals and administrative staff.
Johnson & Johnson, New Brunswick, NJ 2000-2008
Assistant Patent Counsel
- Managed attorneys, patent agents, paralegals and administrative staff;
- Global IP litigation, acquisition, FTO, regulatory, transactional, dispute resolution, licensing, & business development;
- Counseling, securing freedom to operate, IP acquisition, litigation, dispute resolution, opinions, & appeals;
- Drafting, prosecution, appeals, oppositions, & management up to 1200 IP applications/>80 WW IP families;
- IP related agreements (analysis, due diligence, negotiations & drafting) licensing, acquisition, assets, products, methods and technologies;
- Chemistry, biotechnology, biopharma, pharmaceutical, IT, software, electronics, mechanical, and business methods;
- Litigation management and support and counseling; ANDA, Hatch Waxman, Orange book, freedom to operate, patentability, and invalidity opinions;
- >25 Product Teams including worldwide R&D, clinical, manufacturing, commercialization, marketing, co-promotion.
Eli Lilly & Company, Indianapolis, IN 1998-1999
Senior Patent Attorney
Managed attorneys, patent agents, paralegals and administrative staff;
- Global IP litigation, acquisition, FTO, regulatory, transactional, dispute resolution, licensing, & business development;
- Counseling, securing freedom to operate, IP acquisition, litigation, dispute resolution, opinions, & appeals;
- Drafting, prosecution, appeals, oppositions, & management up to 600 IP applications/>70 WW IP families;
- IP related agreements (analysis, due diligence, negotiations & drafting) licensing, acquisition, assets, products, methods and technologies;
- Chemistry, biotechnology, biopharma, pharmaceutical, IT, software, electronics, mechanical, and business methods;
- Freedom to operate, patentability, and invalidity opinions;
- >20 Product Teams including worldwide R&D, clinical, manufacturing, commercialization, marketing, co-promotion.
Sterne, Kessler, Goldstein & Fox, LLP 1994-1998
Patent and Licensing Attorney
- Global patent and IP: acquisition, FTO, transactional, dispute resolution, litigation, & licensing.
- Counseling, securing freedom to operate, IP acquisition, litigation, dispute resolution, opinions, & appeals;
- Drafting, prosecution, appeals, oppositions, & management >250 IP applications/>50 WW IP families;
- IP related agreements (analysis, due diligence, negotiations & drafting) licensing, acquisition, assets, products, methods and technologies;
- Biotechnology, biopharma, pharmaceutical, chemistry, IT, software, electronics, mechanical, and business methods;
- Freedom to operate, patentability, and invalidity opinions.
Patent Agent, Evening Law School, Washington, DC 1988-1994
- Global patent and IP: acquisition, FTO, transactional, dispute resolution, litigation, & licensing.
- Counseling, securing freedom to operate, IP acquisition, litigation, dispute resolution, opinions, & appeals;
- Drafting, prosecution, appeals, oppositions, & management >250 IP applications/>50 WW IP families;
- IP related agreements (analysis, due diligence, negotiations & drafting) licensing, acquisition, assets, products, methods and technologies;
- Chemistry, biotechnology, biopharma, pharmaceutical, IT, software, electronics, mechanical, and business methods;
- Freedom to operate, patentability, and invalidity opinions;
- Browdy & Neimark. LLP, Washington, D.C.;
- Sughrue, Mion, Zinn, Macpeak & Seas, LLC, Washington, D.C.; and
- Foley & Lardner, LLC, Washington, D.C.
National Institutes of Health, National Cancer Institute, Bethesda, MD 1983-1988
Scientific Research relating to genomics, gene and protein expression, sequencing, biotechnology, and cancer research involving software, electronics, chemistry, biology, physics.
Education
George Mason School of Law, Arlington, VA, J.D.(IP Specialty Track)1993
University of Maryland, College Park, MD, M.S. (Biotechnology, Chemistry, Physics) 1983
Duke University, Durham, NC, B.S. (Biotechnology, Chemistry, Physics, Computer Science) 1980
Bar Admissions
Pennsylvania Bar (Reg. No. 71823) 1993
USPTO (Reg. No. 34,033) 1990
Colorado Bar Waive in Pending
Lecturing/Teaching/Committees: Technology Licensing and Patents Professional Services: “Biotechnology and Pharmaceutical IP Due Diligence: Evolving Roles, Increasing Complexity and the Increasing Need for Experienced Counsel at Reasonable Cost.” Licensing Executive Society Annual Meeting, San Francisco, CA, October 18-21, 2009; Lovells, LLP: "Navigating the Genomics Business IP Landscape for Success: Considerations for Successful Genomics-Based Discovery, Development, Clinical Monitoring and Therapy", Business of Genomics, June 8, 2009, San Francisco, CA, Cambridge Healthcare Institute; Johnson & Johnson: "In-House Perspective on Managing IP Arbitrations" at Seminar "International Patent Arbitration and Dispute Resolution", Lovells LLP, NY, NY, May 8, 2008; Various legal & patent department committees, organizer, coordinator, & presenter. IP presentations & seminars to Centocor management, R&D, manufacturing, Product Teams, Pre-Clinical, Clinical, Medical Affairs, & Marketing, 2000-2008; Eli Lilly: Various legal & patent department committees, organizer, coordinator, & presenter for monthly patent topic meetings, 1998-2000; Sterne, Kessler et al.: Organized & presented training seminars for all attorneys & agents, 1994-1997, including current US, EU and Japanese patent law and licensing topics; Automation Committee (office computer systems evaluation & implementation), 1996-1998; Sughrue et al.: Organized & presented weekly training seminars for all attorneys & agents, 1990-1992; AIPLA/USPTO: "Patent Bar Perspectives on Considerations for Application Filing, Prosecution, Interferences & Litigation as a Result of the Implementation of the Biotechnology Sequence Listing Rules, 37 C.F.R. § 1.812-1.825"; San Francisco, California, January, 1991; Monthly Lectures for U.S.P.T.O. in Washington, D.C., February-July, 1991
Association Memberships:
American Intellectual Property Lawyers Association
Pennsylvania Bar Association
Bibliography:
1. Townsend, G. K., "High-Technology Legal and Intellectual Property Due Diligence and Licensing," Vol. 40 (No. 8), p. 79 (August,, 2011) The Colorado Lawyer (http://www.cobar.org/tcl)
2. Battula, N., Townsend, G.K., Shut, H.A.J., Snyderwine, E.G., & Thorgeirsson, S.S., “Role of Recombinant Cytochrome P-450IA1 & P-450IA2 in the Metabolism & Genotoxicity of Food Derived Mutagens,” Progress in Clinical & Biological Research, 340E:127-37 (1990).
3. Battula, N., Townsend, G.K., Shut, H.A.J., Snyderwine, E.G., & Thorgeirsson, S.S., “Preferred Activation & Genotoxicity of Food Derived Heterocyclic Amino Mutagens by Recombinant Cytochrome P 450IA2,” Progress in Clinical & Biological Research 347:55-69 (1990).
4. Kraemer, K.H., Herlyn, M., Yuspa, S., Clark, W.H., Townsend, G.K., Neises, G., Hearing, V.; “Reduced DNA Repair in Cultured Melanocytes & Nevus cells from a patient with Xeroderma Pigmentosum,” Archives of Dermatology 125:263-268 (1989).
5. Faletto, M.B., Koser, P.L., Maccubbin, A.E., Battula, N., Townsend, G.K., Gelboin, H.V., Gurtoo, H.L.; “Cytochrome P3 450 cDNA encodes aflatoxin B1 4 Hydroxylase,” Journal of Biological Chemistry 263:12187 89 (1988).
6. Battula, N., Shut, H.A.J., Snyderwine, E.G., Townsend, G.K., & Thorgeirsson, S.S., “Introduction of Cytochrome P 450 Genes into Mammalian Cells by Recombinant Viruses & Analysis of the Expressed P 450's,” In Biochemistry & Biophysics of Cytochromes P 450, 6th International Congress, ed. J. Schuster (1988).
Contact this candidate