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Colleges & Universities | Finance | Health Care | Hedge Funds
Intellectual Property Rights Management | Intellectual Property Transactions
International | Investment Management | Life Sciences | Private Equity | Private Investment Funds
Real Estate | Securities & Public Companies | Sports Law | High Technology | Venture Capital & Technology Companies



1   Joseph Guiliano, Practice Group, Leader
Rutgers School of Law at Newark, 1993
800-951-4888 x87-9081
joseph.guiliano@ropesgray.com

How big is our practice group?
70 lawyers and technical advisors (13 partners, 2 counsel, 15 associates and 40 technical advisors).

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Jennifer Holmes (Boston University School of Law '04) and Carl Morales (New York University School of Law '09) 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 Carl Morales received his Ph.D in Synthetic Organic Chemistry from the Harvard University in 2004. Jennifer works in our Boston office, and Carl works in our New Yok office.

What we do?
The Intellectual Property Rights Management Group represents clients for whom intellectual property (patents, trademarks and copyrights) is an important asset in the operation of their business. We help our clients procure, manage and defend intellectual property rights, including by prosecuting trademarks and patents. Our practice is primarily centered on the following areas: engineering sciences; life sciences; trademarks and brand management; and media and publishing. 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.

The group 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.

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.

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Christopher Carroll (Suffolk University Law School '03), who is an inventor of 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 from law schools, the firm recruits scientists after undergraduate or graduate training to work as technical advisors in our IP Rights Management group. Technical advisors work at the firm while attending day or night 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:

Christina Meincke
Legal Recruiting Coordinator
1211 Avenue of the Americas
New York, NY  10036-8704
E-Mail: hiringprogram@ropesgray.com

Three of our technical advisors and two former technical advisors 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 Tech Advisor in the IP Rights Management 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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Alla Brukman (New York University School of Law '10) is an associate working in our New York office.  Alla works on the preparation and worldwide prosecution of patent applications in the fields of pharmaceuticals and biotechnology, as well as freedom to operate opinions and assessments of intellectual property portfolios.  Alla joined the firm in 2006 after completing her Ph.D. in Molecular Biology at Princeton University.  Alla's Ph.D. research focused on the interaction of an animal alphaherpesvirus with the host innate immune response.  Alla received a J.D. from NYU in 2010 in our Technical Advisor program.

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Min Park is a registered patent agent with Ropes & Gray's IP Rights Management 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 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 Master 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 Silicon Valley office.

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Gall Gotfried is an associate with Ropes & Gray's IP Rights Management group. Since joining the firm in 2005, he has worked on the preparation and prosecution of patent applications and patentability, invalidity, freedom to operate opinions, and has provided assistance in patent assertion and litigation. Gall received his Master’s in Computer and Electrical Engineering from Carnegie Mellon University and a J.D. from New York Law School in 2010.

What have we done lately?
  • Represent Rovi Corporation in connection with prosecuting and managing its significant patent portfolio and litigating patent disputes in which it is involved. Rovi Corporation 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. 
  • 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 Genzyme Corporation in the acquisition of worldwide rights to three drugs used in the treatment of cancer. 
  • 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.
  • 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.
  • 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.

When do we meet?
Monthly lunch meeting, with bi-weekly meeting of sub-groups.

What kind of academic background do I need to be an IP Rights Management lawyer at Ropes & Gray?
It depends on what area of IP you want to practice in. For life sciences/pharma, you should have an advanced degree; a Ph.D. is strongly preferred. For engineering, applicants need an undergraduate degree in an engineering field.  While helpful, graduate degrees are not require.