Services

Barbara works with clients to develop competitive worldwide patent strategies and to establish strong and defensible patent rights. She performs competitive patent analyses and identifies third party patent risks, providing various patent opinions as warranted. She advises on litigation matters and works on pre-trial, trial and settlement strategies. Barbara also acts for clients in strategic alliances and financings, performing due diligence on target company patents and licenses, helping to value key IP and identify potential risks. She drafts and negotiates IP related provisions in licenses, collaboration and other related agreements. Barbara also advises clients on patent and regulatory exclusivity issues.

WORLDWIDE PATENT PORTFOLIO STRATEGY

Barbara counsels clients on establishing patent rights and developing offensive and defensive worldwide patent portfolio strategies. She assists clients in maximizing value in their patent portfolios in a cost effective manner.

Patent rights management services include:

  • Working with scientists to identify patentable subject matter and advising on future research to support strong IP rights
  • Performing inventorship analyses
  • Approving publication requests
  • Preparing and directing prosecution of patent applications in fields such as pharmaceuticals, small molecule chemistry, biologics, vaccines, medical devices, diagnostics, bioinformatics, genomics and related methods of use
  • Devising strategy and drafting responsive papers to patent examiners, in patent appeals and other post-grant proceedings such as oppositions, nullity proceedings and reexaminations
  • Providing strategic advice on patent life cycle management

COMPETITIVE PATENT LANDSCAPES

Barbara identifies and maps competitive third party patent rights that may be relevant to her clients’ proprietary patent rights, technologies or business interests. Such patent landscapes often help steer her clients’ future research, product development and partnerships.

Competitive IP rights services include:

  • Performing patent searches to identify competitive third party patent rights
  • Analyzing the patentability and likely scope of claims that will grant from pending applications
  • Identifying potentially valuable opportunities to license or acquire patent assets

PATENT OPINIONS

Barbara analyzes her clients’ IP rights and those published by potential competitors to identify and avoid conflict. Opinions relating to competitors’ patents help navigate clear paths to new and strong patent rights, often guiding future research and product development. Opinions relating to clients’ activities with respect to competitive patent rights are also useful in defending against willful patent infringement allegations.

  • Patentability and enforceability
  • Patent claim scope and validity
  • Non-infringement
  • Freedom-to-operate
  • Inventorship and invention dates
  • Litigation analysis

CORPORATE IP SERVICES

Barbara drafts and negotiates license, collaboration and other IP related agreements, often serving as an IP specialist on corporate transaction teams. Barbara also performs IP due diligence for alliances, transactions and financings for corporate clients and investors. She evaluates key IP rights for scope and strength of product/service protection, identifying potential risks relating to patent rights of the target company and its competitors.

IP due diligence services include:

  • Reviewing target patent portfolios for scope and validity of patent claims covering key products and services
  • Recommending new patent prosecution strategies
  • Reviewing competitive IP rights and identifying freedom-to-operate risks
  • Assessing loss of exclusivity dates
  • Identifying potential litigation risk

PATENT ENFORCEMENT AND LITIGATION STRATEGY

Barbara provides strategic advice on enforcing and defending patent rights. She represents clients in administrative patent challenges in the U.S. and in European patent oppositions and appeals. She also provides advice on patent infringement litigation in the U.S. and Europe, including strategies on:

  • Analyzing claim construction, validity and non-infringement positions
  • Selecting and preparing witnesses
  • Gathering and presenting evidence
  • Representing in settlement negotiations