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CHARLES A. WEISS
( Partner, Kenyon & Kenyon LLP )

Bio

Charles A. Weiss concentrates his practice on technology-driven litigation, counseling, and transactions. He also counsels clients on questions of patent validity and infringement and provides a litigator’s perspective on prosecution matters. Mr. Weiss primarily works in the pharmaceutical, chemical and biotechnology areas. He has litigated patent, trade secret, and false advertising cases involving matters such as the expression of recombinant proteins, controlled-release pharmaceuticals, medical diagnostic agents, endocrine and hormone products, nutritional supplements, food chemistry and processing, high-caustic detergents, pipe liners, and tube fittings. He also has substantial experience in the investigation of product counterfeiting and pursuit of those responsible. Mr. Weiss is very active in the firm's appellate practice. Mr. Weiss also enjoys a diverse nonlitigation practice, with an emphasis on supporting transactions in which a substantial value is attributed to a party’s patent position, such its ability to exclude competitors or to bring its product to market free of meritorious infringement claims by others. He has negotiated and drafted hundreds of licenses and other agreements, including commercial collaboration, joint research, and product acquisition agreements. Following his graduation from law school, Mr. Weiss clerked for the New Jersey Supreme Court. After his clerkship and before joining Kenyon & Kenyon, Mr. Weiss worked for several years at a large general practice firm and gained wide experience in varied commercial matters, including corporate and securities transactions, contract litigation, insurance and banking disputes, construction litigation, accounting and attorney malpractice, and the conduct of investigations into employee malfeasance and fraud. Mr. Weiss is an adjunct professor at New York Law School, where he designed and teaches a course on patent litigation and analysis.


Click Here for Patent Slides

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Deborah A. Somerville
( Partner, Kenyon & Kenyon LLP )

Bio

Deborah A. Somerville is a partner of Kenyon & Kenyon in their New York office and has substantial experience in the management, protection and enforcement of intellectual property rights for major U.S. and foreign clients. Her practice focuses on the issues confronting clients in the pharmaceutical, biotech, chemical and medical device industries. Ms. Somerville counsels clients on the validity, scope, enforceability and transfer of intellectual property rights. She actively guides clients in introducing new products and in developing intellectual property strategies and portfolios. While successfully procuring commercially significant patents, she has supervised the drafting of applications and their prosecution, including inter parties proceedings. She also negotiates licenses and conducts due diligence for major corporate transactions. In addition, Ms. Somerville has considerable experience in patent litigation before the federal courts. Ms. Somerville's combination of experience enables her to provide legal advice that considers the full range of issues and options available to clients. Representative clients include biotech companies and research hospitals, as well as manufacturers of pharmaceuticals, polymers and specialty chemicals. Ms. Somerville is currently a co-chair of the Kenyon & Kenyon Life Sciences/Chemical Practice Group. She is involved in the New York Intellectual Property Law Association, the ABA (Intellectual Property Law and Litigation Sections) and the AIPLA. She is also a member of the New York Academy of Science. Ms. Somerville is a co-author of several articles of interest to her practice, including: Getting Creative: From IP to IPO, January 2005, Developments in US Biotech: Focus on Research Tool Patents, 2004, NASDAQ, The Value of Research Tool Patents in View of Integra v. Merck, The Intellectual Property Strategist, August 2003, and The Biotech Patent: To License or Litigate, November 2003, NASDAQ.




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Patrick J. Birde
( Partner, Kenyon & Kenyon LLP )

Bio

Patrick J. Birde is a partner of the firm in the New York office. He has substantial experience in the procurement and enforcement of U.S. and foreign intellectual property rights for major U.S. and foreign clients. With emphasis in the chemical and medical device arts, his legal practice is focused on patent prosecution and licensing matters. His responsibilities have included the drafting, prosecution and licensing of many commercially significant patents. Mr. Birde has a wide range of technical experience with products and processes relating to peptide synthesis, catheters for non-invasive surgical techniques such as angioplasty, angiography and tissue ablation, photographic chemicals, battery chemistry, petroleum refinement, soaps and detergents, dental compositions, electrically conductive polymers, cooking oil recovery, plastic packaging, bioabsorbable polymers, fluorocarbon propellants, metal oxide catalysts and food chemistry. He has also worked on projects in the textile, elevator door operator, plastic fastener, electric current interrupter, conductive ink, ceramic and other industries. Before entering law, Mr. Birde worked as a research and development chemist for a photographic chemical company. Mr. Birde serves on the editorial board of Patent World magazine and has written several articles and monographs on intellectual property topics, including: 35 U.S.C. § 154(d) Grants Patent Applicants Provisional Rights in Their Published Patent Applications, Intellectual Property Strategist, (September 2003), United States Patent Claim Interpretation After Markman, Patent World, Issue 83 (June/July 1996), 1995: Developments in United States Patent Law, Patent World, Issue 79 (February 1996), Some Significant Changes in US Patent Office Practice October 1992-November 1993, Patent World, Issue 60 (March 1994), Stronger US Patents: Complying with Revised Information Disclosure Requirements, Patent World, Issue 51 (April 1993) and A United States Patent Law Primer, Patent Yearbook, 1993, Managing Intellectual Property, Euromoney Publications, plc (1993).




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Reference and Readings

www.uspto.gov

http://www.kenyon.com/files/tbl_s47Details/FileUpload265/217/From%20IP%20to%20IPO.pdf

http://www.kenyon.com/files/tbl_s47Details/FileUpload265/234/create%20act.pdf

http://www.kenyon.com/files/tbl_s47Details/FileUpload265/679/A.%20Antony%20Pfeffer%20(article).pdf

http://cyber.law.harvard.edu/fallsem98/final_papers/Lee.html

http://library.findlaw.com/1999/Jan/1/241479.html

http://www.nolo.com/lawcenter/ency/article.cfm/objectID/021C9D66-3260-428F-83BBB68C2BE8A2DF/ catID/21B0B82E-AFD4-4452-85E9E85A1E836322

http://www.nolo.com/lawcenter/ency/article.cfm/objectid/B1EDE764-1F7D-472B-92E4197921C56A8E/ catID/21B0B82E-AFD4-4452-85E9E85A1E836322

http://www.nolo.com/lawcenter/ency/article.cfm/objectid/380B6EC6-E760-41AE-92A9B5C7EB430B1A/ catID/21B0B82E-AFD4-4452-85E9E85A1E836322

http://www.nolo.com/lawcenter/ency/article.cfm/objectID/E59272CB-5A81-4CC6-965A27949A087A51/ catID/21B0B82E-AFD4-4452-85E9E85A1E836322

http://www.nolo.com/lawcenter/ency/article.cfm/objectID/C2DBFF26-7097-4B7B-AE36DA00499851EE/ catID/2D212B35-B211-4FD4-B46D84A00C15CEBF