Senior Patent Attorney/Principal Consultant Resume Example Mary K Hehman, LLC

SENIOR PATENT ATTORNEY/PRINCIPAL CONSULTANT

Professional Summary

Analytical and skillful Patent Attorney with 20+ years of experience successfully practicing all aspects of intellectual property law. A collaborative and team-oriented professional, who works efficiently both independently and with diverse stakeholders from business professionals, engineers and scientists to outside counsel.

Skills

Proficient with numerous intellectual property databases
Excellent written and oral communications
Extensive technology transfer and licensing experience
Highly experienced with processing documents
Patent application preparation and prosecution world-wide
Knowledgeable of various Federal laws and regulations

Able to develop productive relationships with diverse stakeholders
Customer service oriented
Asset Management
High ethical Standards
Fast learner

Work History

Senior Patent Attorney/Principal Consultant, 01/2019 to Current
Mary K Hehman, LLC – Eugene, OR

Provide all aspects of intellectual property support to in-house biotech patent attorneys, particularly at research-intensive, innovative start-up companies. Assist with asset management from assessing invention disclosures, including providing patentability and non-infringement analyses, through patent application preparation and prosecution.

Senior Patent Counsel, 05/2014 to 10/2017
Boehringer Ingelheim GmbH & Co KG – Ingelheim, Germany

Managed and collaborated with team of diverse in-house professionals, including scientists, engineers, business professionals, management and outside counsel, under tight timelines, to successfully invalidate four competitor patents at United States and European patent offices.
Provided intellectual property support as part of transactional teams for numerous technology transfer efforts, including providing IP due diligence, negotiation support and contract provision review for both in-licensing as well as out-licensing activities.
Managed, several outside law firms regarding patent preparation, prosecution and opinion matters, including managing deadlines and budgets for multiple concurrent projects.
Left company to care for ill parents (2017-2019).

Senior Patent Counsel, 05/2007 to 05/2014
Amgen, Inc – Thousand Oaks, CA

Supported Amgen's transactional team in numerous technology transfer endeavors, including out-licenses, in-licenses, asset sale, spin-off, collaboration agreements, co-development agreements, manufacturing and research agreements. Supported and negotiated numerous research agreements with universities, including agreements involving Howard Hughes fellows that required delicate three way negotiations.
Responsible for team of 3 paralegals, in negotiation and drafting of material transfer agreements, confidentiality agreements, research agreements, consulting and clinical supply agreements.
Developed and managed global patent estates pertaining to multiple clinical candidate compounds as part of cross-functional teams to move drug candidates through clinical trials to FDA approval process. Required supporting stake holders including medical doctors, scientists, business, marketing and regulatory professionals while complying with complex regulations relating to human research subjects, institutional review boards, privacy matters and the like to procure valuable intellectual property assets.
Co-led team of attorneys in collaborating closely with engineers to proactively identify and procure intellectual property assets for Amgen's manufacturing technology.
Co-led Amgen's Large Molecule IP policy team in devising Amgen's IP strategy and policy for its biologic product portfolio. Organized, set agenda, presented and facilitated discussion at team meetings.
Co-led team of attorneys in analyzing and implementing policy and practical changes pursuant to America Invents Act.
Presented IP educational seminars regularly to Amgen's technical staff.
Managed patent assistant direct report.

Senior Patent Counsel, 05/2004 to 05/2007
Archemix Corp – Cambridge, MA

Independently developed and managed Archemix's global patent portfolio.
Drafted and prosecuted patent applications as well as supervised drafting and prosecution by in-house patent agent and outside counsel while ensuring deadlines were productively met for more than 30 patent families.
Negotiated MTAs, CDAs, research agreements and provided intellectual property support for numerous out-licenses.
Provided patent landscape assessments, third party invalidity and non-infringement opinions.
Presented business strategy impacting IP issues to senior management and board of directors.
Trained research staff regarding IP issues, reviewed publications and provided significant client counseling to all stake holders.
Left company to start family.

Education

J.D: 1994
University Of Colorado School Of Law - Boulder, CO

B.S: Biology, Chemistry, 1987
University of Utah - Salt Lake City, UT

Accomplishments

Oregon State, 2020
Washington State, 1995
United States Patent and Trademark Office, 1994

Resume Overview

Companies Worked For:

Mary K Hehman, LLC
Boehringer Ingelheim GmbH & Co KG
Amgen, Inc
Archemix Corp

School Attended

University Of Colorado School Of Law
University of Utah

Job Titles Held:

Senior Patent Attorney/Principal Consultant
Senior Patent Counsel

Degrees

J.D : 1994
B.S : Biology, Chemistry , 1987

Senior Patent Attorney/Principal Consultant Resume Example

Resume Score: 80%

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