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Rutgers University School of Law, J.D.
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University of Michigan, Ph.D.
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Indiana University, M.S.
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Kalamazoo College, B.A.
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Friedrich Alexander Universität - Erlangen/Nürnberg, Germany
- District of Columbia
- Illinois
- Massachusetts
- U.S. Patent & Trademark Office
- U.S. Court of Appeals, First Circuit
- U.S. District Court, Massachusetts
- U.S. District Court, Northern District of Illinois
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American Bar Association
- American Chemical Society
- Asian American Lawyers Association of Massachusetts
- Boston Patent Law Association
- Licensing Executives Society
- National Asian Pacific American Bar Association
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Jeffrey's practice is devoted to all aspects of commercialization of technology. As a scientist/inventor, entrepreneur and counselor, Jeffrey has experience from all of these perspectives. His practice includes corporate counseling, formation and execution of intellectual property strategy, and patent prosecution and opinion work in the areas of chemistry, pharmaceuticals, biotechnology, agriculture, nutraceuticals, polymers, diagnostics, and medical devices. He also advises on issues of, and is experienced in establishing infrastructure for, development of intellectual property. Jeffrey's clients include multinational chemical and pharmaceutical companies, emerging biopharmaceutical companies, venture capital and financial institutions, and academic and governmental research institutions throughout the world. Jeffrey also served as Chair of the Firm's Intellectual Property Department and serves on the Firm's Boston Office Teamwork and Diversity Strategic Committee.
Notable Experience
- Jeffrey has considerable experience in patent prosecution matters. He has prepared and prosecuted patent applications relating to pharmaceuticals (both approved and candidates in clinical trials), drug design/discovery technologies, nutraceuticals, medical diagnostics and biotechnology. Jeffrey also is experienced in specialty chemical and polymer technologies, medical devices, food and agricultural technologies and business methods.
- Jeffrey also has experience in transactional matters including negotiation and establishment of licensing and R&D collaboration agreements, manufacturing and supply agreements, due diligence studies, venture capital funding, merger and acquisition, and technology acquisitions.
- As in-house counsel to a biopharmaceutical start-up company, Jeffrey established and guided the company's patent law department, including formation of worldwide corporate intellectual property strategy and internal intellectual property policies. Jeffrey also advised on aspects of corporate and business development activities. The start-up was ultimately acquired by a major U.S. biotechnology company.
- Jeffrey is an invited speaker internationally on various intellectual property issues and has lectured at the Harvard Extension School and at MIT Sloan School of Management.
- Jeffrey is a co-author of written materials and lectured for the "Biotechnology: Patents, Licensing & FDA Practice" course for the Patent Resources Group.
- Jeffrey is a co-inventor on two U.S. Patents and co-author of numerous scientific publications and presentations.
Jeffrey's practice is devoted to corporate counseling, formation and execution of intellectual property strategy, and patent prosecution and opinion work in the areas of chemistry pharmaceuticals, biotechnology, agriculture, nutraceuticals, polymers, diagnostics, and medical devices. Jeffrey's clients include multinational chemical and pharmaceutical companies, emerging biopharmaceutical companies, and academic and governmental research institutions throughout the world. Jeffrey also served as Chair of the Firm's Intellectual Property Department for the past five years and serves on the Firm's Boston Office Teamwork and Diversity Strategic Committee. Notable Experience - Jeffrey has considerable experience in patent prosecution matters. He has prepared and prosecuted patent applications relating to pharmaceuticals (both approved and candidates in clinical trials), drug design/discovery technologies, nutraceuticals, medical diagnostics and biotechnology. Jeffrey also is experienced in specialty chemical and polymer technologies, medical devices, food and agricultural technologies and business methods.
- Jeffrey also has experience in transactional matters including negotiation and establishment of licensing and R&D collaboration agreements, manufacturing and supply agreements, due diligence studies, venture capital funding, merger and acquisition, and technology acquisitions.
- As in-house counsel to a biopharmaceutical start-up company, Jeffrey established and guided the company's patent law department, including formation of worldwide corporate intellectual property strategy and internal intellectual property policies. Jeffrey also advised on aspects of corporate and business development activities. The start-up was ultimately acquired by a major U.S. biotechnology company.
- Jeffrey is an invited speaker internationally on various intellectual property issues and has lectured at the Harvard Extension School and at MIT Sloan School of Management. Jeffrey is a co-author of written materials and lectured for the "Biotechnology: Patents, Licensing & FDA Practice" course for the Patent Resources Group.
- Jeffrey is a co-inventor on two U.S. Patents and co-author of numerous scientific publications and presentations.
Jeffrey's practice is devoted to corporate counseling, formation and execution of intellectual property strategy, and patent prosecution and opinion work in the areas of chemistry pharmaceuticals, biotechnology, agriculture, nutraceuticals, polymers, diagnostics, and medical devices. Jeffrey's clients include multinational chemical and pharmaceutical companies, emerging biopharmaceutical companies, and academic and governmental research institutions throughout the world. Jeffrey also served as Chair of the Firm's Intellectual Property Department for the past five years and serves on the Firm's Boston Office Teamwork and Diversity Strategic Committee.
Recent Speaking Engagements and Publications
- "70th Anniversary of the Japanese American/Canadian Internment - Redress, Remember, Relate," moderator, National Asian Pacific American Bar Association National Convention, November 15-18, 2012, Washington, DC.
- "Rise to the Top: Career Advice from Successful Lawyers," speaker, National Asian Pacific American Bar Association National Convention, November 17-20, 2011, Atlanta, GA.
- "Effective IP Mechanisms for Bringing Biopharmaceuticals to Market," speaker, BIO China, October 12-13, 2011, Shanghai.
- "Bilski's Impact on Biotechnology and Medical Diagnostic Claims," co-author, Edwards Angell Palmer & Dodge Client Advisory, August 2010.
- First Annual Intellectual Property Update Conference, speaker, London, United Kingdom, December 3, 2009.
- "Bio patents down, but not out in New England," quoted, Mass High Tech, June 26, 2009.
- "Expertise: The Legal Business of IP Needs to Become Transatlantic," author, Biotech Finances, April 27, 2009.
- "Court Ruling May Impact Life Science Patents," co-author, Genetic Engineering & Biotechnology News, February 1, 2009.
- "Patentable Subject Matter: In re Bilski," co-author, Edwards Angell Palmer & Dodge Client Advisory, December 2008.
- "Biotech, IT stalemate puts brakes on IP reform law," interviewed and quoted, Boston Business Journal, June 6, 2008.
- "U.S. Intellectual Property: Changes in the Law and the Rules," National Asian Pacific Bar Association Northeast Regional Conference, May 3, 2008, Norwalk, CT.
- "New Issues in Patent Law," BioFlorida Northeast Meeting, February 22, 2008, Alachua, FL.
- "Patent Anxiety," interviewed and quoted, Chemical and Engineering News, December 17, 2007.
- "Obviousness ruling could have far-reaching impact," quoted, Boston Business Journal, June 1, 2007.
- "The rise of new trends in collaborative research," co-author, Pharmaceutical Law Insight, November 2006.
- "Asian American Voting Rights and Political Participation," National Asian Pacific Bar Association 18th National Convention, November 10, 2006, Philadelphia, PA
- "Investor Panel: Massachusetts to Mumbai, Boston to Beijing - Leveraging the Global Knowledge Economy for Start-Ups," speaker, Mass Biotech Council's 8th Annual Investor Conference - MASS Opportunities, Boston, Massachusetts, November 2, 2006.
- "Patent-filing boom serving area IP law firms well," Boston Business Journal, July 7-13, 2006.
- "In the Minority," interviewed and quoted, Massachusetts Lawyers Weekly, May 8, 2006
- "Indian patent law: Mix of cures, ills for pharma patents," Mass High Tech, April 7 - 13, 2006
- "New Strategies for Managing Your Portfolio in a First Inventor to File World: Strategies for Outside Counsel," The 21st Annual Intellectual Property Law Conference, American Bar Association, Section of Intellectual Property Law, Washington, D.C., April 7, 2006
- "Legal Affairs: Patent Law in India Focuses Strongly on R&D," Genetic Engineering News, September 15, 2005.
- "IP Driven Economic Growth," speaker, Regional Technology Corporation's Intellectual Property Legal Presentation, Springfield, MA, July 2005.
- "Personalized Medicine: Drifting into the Safe Harbor?" Special Focus: Legal and Regulatory Affair Genetic Engineering News, June 1, 2005.
- "Asian American Attorneys: Shattering Conventional Notions," interviewed and quoted, Minority Corporate Counsel Association's Diversity & The Bar, May/June 2005.
- "Beware of the Secret Prior Art - The Collaboration That Kills," Edwards & Angell Intellectual Property Bulletin, Spring 2005.
- "Intellectual Property at the Crossroads of IT and Biotech: The Developing Landscape," Enterprise Development Corporation/University of Miami Bio Tech 2005 Conference, Miami, FL, 2005.
- "Reducing New Risks in Commercializing University Research," co-author, Intellectual Property Today, December 2004.
- "Aventis, Amgen Ink Pricey Deals," interviewed and quoted, Chemical & Engineering News, September 15, 2003.
- "Biotech Vies for Position," interviewed and quoted, Chemical & Engineering News, January 27, 2003.
- "Intellectual Property Strategy for Drug Development," Society of Chinese Bioscientists in America BioPharm 10th Annual Conference, Rutgers University, Piscataway, NJ, 2003.
- "Enforcing Biopharm Patents," Society of Chinese Bioscientists in America BioPharm 2003 Conference, King of Prussia, Pennsylvania.
- "Marketing Your Intellectual Property: In-Licensing from A Commercial Perspective," Association of Anatomy, Cell Biology, and Neurobiology Chairpersons 2003 Annual Conference, Gamboa, Panama.
- "Biotech on Deck for Next Wave of Blockbusters," interviewed and quoted, Chemical Week, June 26, 2002.
- "Exploiting Intellectual Property Through Licensing and Collaborative R&D Agreements," 2002 Conference on Development of Taiwan's Biopharmaceutical Industry - Technology Transfer and Global Alliance, Taipei, Taiwan.
- "Recent International Intellectual Property Decisions," First International Conference on Intellectual Property Rights and Biotechnology, Taipei, 2002.
- "Emerging Issues in Biotechnology Business Strategy," National Health Research Institute, Taipei, 2002.
- "The Role of Intellectual Property Rights in Emerging Biotechnology Companies," First International Conference on Intellectual Property Rights and Biotechnology, Taipei, 2002.
- "Mergers and Acquisitions: Issues in Structuring the Deal," BIO2001, San Diego.
- "Optimizing Your Company's Valuation: Strategies for Exploiting Intellectual Property," President Life Sciences Biotech CEO Forum 2001 - Taipei.
- "Intellectual Property as the Foundation of Business Success," Development Center for Biotechnology, Taipei, 2001.
- "Mergers & Acquisitions and Other Options," Wm. Gallagher Associates Risk & Technology Conference 2001, Boston.
Before Edwards Wildman
Previously, Jeffrey was a Principal of Fish & Richardson P.C.; Corporate Counsel, Amgen Inc.; Patent Counsel and General Counsel, Kinetix Pharmaceuticals, Inc. (now Amgen Inc.); Associate, McAndrews, Held & Malloy, Ltd.; and Patent Agent, Fish & Neave. Before attending law school, Jeffrey was Senior Scientist, Medicinal Chemistry, The R.W. Johnson Pharmaceutical Research Institute (Johnson & Johnson); Research Assistant Professor, University of South Carolina, and an Undergraduate Research Scientist at the Upjohn Company.
Besides Edwards Wildman
Jeffrey is Past President of the Asian American Lawyers Association of Massachusetts (AALAM) and served on their Executive Board for seven years, and he previously served on the National Asian Pacific American Bar Association (NAPABA) Board of Governors. He was also Co-Chair of the NAPABA 2009 National Convention Host Steering Committee in Boston and served on the NAPABA Committee on Regional Conferences. He previously served as co-chair of the Chemical Patent Practice Committee for the Boston Patent Law Association. Jeffrey is an avid tennis player and volunteered with the Massachusetts Special Olympics State Games (tennis) having previously served on its Tennis Management Team. Jeffrey is a member of the Rutgers University School of Law Minority Student Program (MSP) Legacy Alumni Campaign Committee and previously served as a member of the Board of Trustees of Kalamazoo College.
*Currently admitted in DC, Illinois and Massachusetts and by the USPTO only. Florida Bar license pending.
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