ERIC K. VOELK. Ph.D., J.D.
**** **** ******, ******* ****, CA 94061
650-***-**** • ******@*******.***
PROFESSIONAL EXPERIENCE
Gordon & Rees, San Francisco, CA February 2009 to Present
Attorney at Law
• Contract attorney for Intellectual Property group. Chemical and pharmaceutical patent practice including preparation and prosecution of patent applications.
Exelixis, Inc., South San Francisco, CA August 2007 to January 2009
Director, Patent Law & Senior Patent Attorney
• Supervise and manage two chemical patent attorneys. Pharmaceutical patent practice including preparation and prosecution of patent applications, domestic and foreign, directed to small molecule chemistry. Monitor and evaluate research and development activities to identify and establish strong intellectual property estates. Manage outside counsel in preparation and prosecution of patent estate. Advise on freedom-to-operate, patentability, infringement issues. Publication review.
• Provide support for business development including due diligence for out-licensing opportunities.
• Participate in developing internal IP department policies and procedures, and guide support staff on patent law and procedures.
Cephalon, Inc., Frazer, PA April 2000 to July 2007
Director, Patent Counsel, Feb. 2001 to July 2007
Associate Director, April 2000 to Feb. 2001
• Pharmaceutical patent practice including preparation and prosecution of patent applications, domestic and foreign, directed to small molecule, solid form, process and formulation arts. Monitor and evaluate research and development activities to identify and establish strong intellectual property estates. Manage outside counsel in preparation and prosecution of patent estate. Advise on freedom-to-operate, patentability, infringement issues. Supervise and train junior attorney. Review, evaluate and advise on proposed scientific publications.
• Participation on teams for the management and review of the patent estate, for development of lead compound candidates, for lifecycle management of marketed product and for management of joint collaborations. Provide patent support on FDA regulatory matters and advise on Hatch Waxman issues such as patent term extension, marketing exclusivities, and ANDA filings.
• Provide support for business development including due diligence for in- and out-licensing opportunities, including freedom-to-operate, patentability, infringement opinions and patent and marketing exclusivity evaluations.
• Evaluate, advise, negotiate and draft a variety of contracts, including licenses, material transfer, confidentiality, contract synthesis, consulting and research collaboration agreements.
• Coordinate and establish internal IP department policies and procedures, and train and guide support staff on patent law and procedures.
Sanofi-Aventis, Bridgewater, NJ Sept. 1997 to April 2000
Patent Attorney, July 1999 to April 2000
Senior Patent Liaison, Sept. 1997 to July 1999
• Pharmaceutical patent practice, including small molecule and peptide chemistry. Preparation and prosecution of domestic and foreign patent applications. Manage outside counsel, support business services by drafting and reviewing agreements, and coordinate with research teams for patentability determinations.
Charlton Law Firm, Milwaukee, WI May 1994 to August 1997
Partner, Attorney
• Co-founder of start-up law firm.
• General Practice, including Environmental, Personal Injury, Bankruptcy, Business and Criminal Law. Extensive practical experience, including negotiations, case management, discovery, motion practice and jury and bench trials.
EDUCATION
J.D., 1994, Hamline University, St. Paul, MN
Ph.D., Organic Chemistry, 1991, The Ohio State University, Columbus, OH
Advisor: Dr. Matthew Platz
Dissertation: “The Photolytic Action of 3-Amino-6-iodoacridine with Nucleic Acids”
M.S., Organic Chemistry, 1987, The Ohio State University, Columbus, OH
Advisor: Dr. Matthew Platz
B.A., Chemistry and Mathematics, 1984, State University of New York at Potsdam
BAR ADMISSIONS
U.S. Patent and Trademark Office – admitted 1998
Wisconsin State Bar – admitted 1994
MEMBERSHIPS
American Intellectual Property Law Association, American Chemical Society, Wisconsin Bar Association