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Antitrust | Colleges & Universities | Debt
Financing | Health
Care Intellectual
Property & Rights Management | International | Investment
Management Life
Sciences | Private
Equity | Private
Investment Funds | Real
Estate | Securities & Public
Companies
Sports Law |
Technology
Companies |
Venture Capital
& Emerging Companies
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| How
big is our practice group?
101 lawyers and technical advisors (19 partners, 45 associates and 37 technical advisors).
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Christine
Santariga (Boston College Law School '06), works on IP transactions that include licensing, services, outsourcing, and strategic agreements. She also advises clients on a wide variety of privacy and information security compliance issues. She is a Certified Information Privacy Professional (CIPP) and a member of the International Association of Privacy Professionals. |
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Erica
Hepp (Boston University School of Law '05), has worked on several large transactions as part of the IP specialist team and is a member of the trademark and copyright groups as well as the data privacy and security group. Her practice includes a mix of trademark prosecution, licensing, advertising copy review, transactional IP, and general corporate work. |
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What we do?
The Intellectual Property Group represents
clients for whom intellectual property is an important asset in the operation
of their business. In addition to helping our clients complete transactions
involving intellectual property, we also help our clients procure, manage,
and defend intellectual property rights, including by prosecuting trademarks
and patents. Our practice is primarily centered on five areas: engineering
sciences; life sciences; trademarks and brand management; media and publishing;
and data and privacy. The group's engineering sciences IP practice focuses
on assisting clients involved in developing and marketing advanced technologies
developed within the fields of electrical, optical, and mechanical engineering.
Our life sciences IP practice represents the firm's life sciences clients in
various biological and chemical discovery areas.
Our corporate patent practice, which has 12 partners and 62 associates
and technical advisors, helps our clients by designing patent portfolios that
enhance the ability of our clients to reach their business goals, evaluating
patent validity, infringement and enforceability; preparing and prosecuting
patent applications; handling adversarial proceedings involving U.S. and foreign
prosecution matters, assisting in patent licensing transactions; and explaining
the implications of recently proposed and enacted patent legislation around
the world to our clients.
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Jennifer Holmes (Boston University School of Law '04)
and Erika Takeuchi (Columbia
Law School '00) are associates in the group's Life Sciences
Practice, supporting the patent prosecution, product clearance
investigations, and patent litigation we do for our life sciences
clients. Jennifer received her Ph.D. in molecular biophysics
and biochemistry from Yale University in 1998, and Erika received
her Ph.D in microbiology from the University of Rochester in
1996. Jennifer works in our Boston office, and Erika works
in our Tokyo office. |
In the area of trademarks and brand management, we provide comprehensive
services, from mark clearance to registration, portfolio management,
advertising compliance, and enforcement litigation.
In our media and publishing practice we represent clients who
create, manage and exploit media properties in both traditional
and news media.
Finally, in our data and privacy practice, we help our data industry
clients build and manage businesses that comply with the ever-expanding
privacy regulations in the United States and abroad. We also
help other clients assess and minimize risk involving data.
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Stuart
Yothers (Fordham Law School '05) advises clients
in several areas of our Intellectual Property Practice, including
patent litigation, patent prosecution and opinions, intellectual
property licensing, and due diligence relating to mergers,
acquisitions and licensing transactions. Stuart received
his B.S. in civil engineering from Columbia University in
2001 and his B.S. in physics from Wofford College in 2001. Stuart
works in our New York office. |
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Christopher Carroll (Suffolk University Law School '03), who is an inventor
for three U.S. Patents and is registered to practice before the U.S. Patent and
Trademarks Office, routinely drafts patent applications for the firm's
technology clients and advises on other intellectual property and technology
issues. Chris has a B.S. in electrical engineering and an M.S. in computer engineering.
He previously worked as an engineer in the telecommunications industry. |
Technical Advisor Program: In
addition to hiring our associate lawyers from law schools, the firm
hires scientists after their graduate training to work as technical
advisors in our Intellectual Property Group. Technical advisors work
at the firm while attending law school. Some attend school days and
others at night. Technical advisors generally become associates at
the firm after their law school training is complete. They are eligible
to receive seniority credit for the time spent as a technical advisor.
If interested in applying for a position in this program, please
submit your resume materials to:
Ashley Von Glahn
Legal Recruiting Coordinator
One Metro Center
700 12th Street, N.W., Suite 900
Washington, DC 20005-3948
E-Mail: hiringprogram@ropesgray.com
Four of our technical advisors and a former technical advisor
who recently became an associate are profiled below:
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Tushar Parlikar joined Ropes & Gray in 2007 after completing his Ph.D. in
Electrical Engineering at MIT. He is currently a Patent Agent in the IP/Corporate
group. Tushar has co-authored several peer-reviewed technical papers and is a
co-inventor on a U.S. patent and several U.S. patent applications. In the past
few years, Tushar has gained experience in preparing and prosecuting patent applications
for a wide range of technologies. Tushar says that working at Ropes & Gray
has been "intellectually challenging and exciting", and that the "experience
he's gained in managing client expectations" and "working with top-notch
IP attorneys" is "invaluable". |
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Carl Morales (New York University School of Law '09 (expected)) joined the firm as a technical advisor in 2004. He has worked on the preparation and prosecution of patent applications as well as patentability, invalidity, and freedom to operate opinions relating to chemistry, biotechnology, pharmaceuticals, and mechanical devices. Carl's Ph.D. work at Harvard focused on the synthesis of natural products and enantioselective reaction design. Carl works in our New York office. |
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Min Park is a registered patent agent with Ropes & Gray's Intellectual Property Group. Since joining the firm in 2007, she has worked on the preparation and prosecution of patent applications and patentability, invalidity, and freedom to operate opinions relating to medical and mechanical devices. Prior to joining Ropes & Gray, Min previously worked as a product development engineer for Biomet Trauma, where she developed implants and instrumentation for the treatment of fractures of the femur. Min received her B.S. in Biological engineering and Masters of Engineering in Mechanical engineering from Cornell University. |
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Mimi Lee joined the firm as a technical advisor in 2006. Mimi works on the preparation and worldwide prosecution of patent applications relating to biology, biotechnology and pharmaceuticals. Mimi received her Ph.D. in neurobiology from MIT in 2006 and currently works in our New York office. |
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Chia-Hao La (Fordham University Law School '08) joined the firm as a technical advisor in 2003. Since graduating from Fordham in 2008, Chia has continued at the firm as an associate practicing in the Intellectual Property & Rights Management department and the Intellectual Property Litigation department. His practice includes drafting and prosecuting patent applications in the areas of electrical engineering, computer science, medical devices, and business methods; performing assessments of intellectual property in connection with corporate transactions and pre-suit investigations; and working on various aspects of ongoing patent litigations. Chia received his B.S. and M.S. in electrical engineering and computer science from MIT. He works in our New York office. |
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| What
have we done lately?
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- Represented a consortium of private equity firms, including
Bain Capital and Catterton Partners, in its $3.2 billion acquisition
of OSI Restaurant Partners, Inc., a casual dining restaurant
company whose portfolio of brands includes Outback Steakhouse,
Carrabba's Italian Grill, Bonefish Grill, Fleming's Prime Steakhouse & Wine
Bar, Roy's, Lee Roy Selmon's, Cheeseburger in Paradise and Blue
Coral Seafood & Spirits. Intellectual property due
diligence and evaluation, particularly with respect to the company's
brands, played a key role in this transaction. For a description
of an associate's role in this transaction, click here.
- Represent Gemstar-TV Guide in connection with prosecuting and managing its significant patent portfolio and litigating patent disputes in which it is involved. Gemstar-TV Guide is a leading, global media and technology company that develops, licenses, markets and distributes products and services that simplify and enhance television guidance and consumer entertainment. For a description of the associate's role on these matters, click here.
- Represent Biogen in the global management and production of their IP rights in their number 1 product, Avonex®, on the treatment of multiple sclerosis.
- Represented Medtronic in the $1.35 billion acquisition of the
medical device patent portfolio of a prolific inventor in settlement
of ongoing patent litigation between the parties. This transaction
required an integrated team of patent prosecution, litigation,
licensing and mergers and acquisitions expertise drawn from three
of our offices to structure and negotiate a complex acquisition.
- Assisted EMC, the leading data storage company, with a series of corporate acquisitions and investments, helping them to incorporate the latest technology and software into their storage products, and advising them on a wide range of intellectual property issues.
- Represented IVREA, a start-up biotech company, in connection with a major license and development agreement with a pharmaceutical company. For a description of the associate's role in this transaction, click here.
- Represent Simmons in connection with global brand licenses and brand management for Simmons mattresses, including a portfolio of active registered trademarks, and acquisition of new product lines.
- Represented Genzyme Corporation in connection with a license and product agreement related to antisense therapy for the treatment of high cholesterol.
- Represent
Vertex Pharmaceuticals in coordinating and designing its patent
portfolio worldwide. Some of Vertex’s patents
related to HIV-drugs, which are now on the market. Other patents
related to Hepatitis C virus drugs, now in clinical testing.
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Represented Bayer Health Care in a $225 million co-development
and commercialization agreement with Nektar Therapeutics to
commercialize NKTR-061, a drug that will be usedto treat Gram-negative
pneumonias. Under the terms of the agreement, Bayer is responsible
for global clinical development, regulatory strategy, manufacturing
and marketing of NKTR-061. Nektar received $50 million upfront
payment and will receive $175 million in milestonepayments with
successful development and commercialization of NKTR-061.
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When do we meet?
Monthly lunch meeting, with weekly meeting of sub-groups.
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