SUMMARY:
CHEMICAL / PHARMACEUTICAL PATENT ATTORNEY
Track record of expanding and protecting intellectual property portfolios of both global and startup entities spanning pharmaceutical, organic/inorganic chemical, and plastics technologies. Well-versed in all aspects of intellectual property, including patents and trademarks, as well as all types of contracts, negotiations, and due diligence associated therewith. Demonstrated success partnering with inventors to identify and extract patentable ideas. Adept at managing IP department operations, supervising and training attorneys and patent agents, drafting and prosecuting patent applications, and collaborating with outside counsel.
Specialties:Patents and all IP aspects of a broad range of technologies.
Also, experienced with agreements, opinions, due diligence, etc. (fluent in French).
Vice-President, Intellectual Property and Corporate Counsel @ Responsible for all activities related to intellectual property, product branding and trademarks. Also provide legal counsel to Personal Care Division. From October 2012 to Present (3 years 1 month) Raleigh, North CarolinaChemical/Pharmaceutical Patent Attorney @ Provide consulting services spanning intellectual property strategy development, training, and patent application development to small pharmaceutical companies.
Design and facilitate IP training courses, training inventors on intellectual property matters, the patenting process, and the new America Invents Act (AIA).
Advise early-stage startup and small international pharmaceutical companies on optimal strategies for protecting their worldwide intellectual property, particularly focused on U.S. and Europe.
Draft patent applications for pharmaceuticals and methods of use, contribute to the extraction/development of additional patentable inventions of various types in the pharmaceutical field, and coach a manager of research through the patent application process. From July 2011 to September 2012 (1 year 3 months) Vice President Intellectual Property / Legal @ Directed all global intellectual property activities for specialty pharmaceutical company focused on developing and commercializing ophthalmic and respiratory products (acquired by Merck in 2011). Delivered IP due diligence/comments for all prospective in-licensing and out-licensing deals, managed IP aspects of FDA filings, reviewed potential acquisitions, and planned corporate strategy protecting key technologies, including active compounds and therapeutic methods for ophthalmic and respiratory diseases. Advised executive team on IP issues and new/proposed patent legislation and USPTO rules. Drafted and prosecuted patent applications in house and partnered with outside counsel. Conducted patent agent training. From March 2001 to June 2011 (10 years 4 months) Senior Patent Attorney @ Managed three-employee satellite IP office supporting the Pharmaceutical Group specializing in generic and proprietary opthalmics and intranasal products/therapies. Advised company on IP matters and performed generic clearance reviews, patent preparation and prosecution, licensing, and opinion development for pharmaceutically active compounds, drug delivery systems, formulations, manufacturing processes, and methods of use. Trained a new patent attorney. From April 2000 to January 2001 (10 months) Tampa/St. Petersburg, Florida AreaChief Patent Counsel - Calgon/Assistant Secretary-ECC @ Directed five-employee IP department supporting Calgon’s water treatment chemical business. Oversaw department staffing, strategy development, and budget development/management, as well as contracts and IP deal process. Prepared and prosecuted patents and trademarks. Investigated IP issues, drafted IP agreements, and wrote opinions. Delivered litigation support to internal business units and outside counsel, advised business leaders and inventors on IP issues, and conducted various aspects of IP due diligence. From September 1997 to March 2000 (2 years 7 months) Greater Pittsburgh AreaSenior Patent Attorney @ Selected as patent attorney for Performance Chemicals and Flexible Plastics business units. Advised inventors and business groups on all aspects of intellectual property law. Trained and mentored junior attorneys. Prepared and prosecuted U.S. and foreign patent applications. Drafted IP agreements and opinions. Researched and cleared new products. From March 1989 to September 1997 (8 years 7 months) Kingsport, TennesseePatent Attorney @ Counseled U.S. and Belgium parent company inventors; drafted and prosecuted patent applications, and drafted agreements and opinions; supporting chemical and petroleum technologies, including polymers and catalysts. From June 1987 to March 1989 (1 year 10 months) Dallas/Fort Worth AreaChemist / Patent Attorney @ Chemist in R&D, then Patent Agent/Attorney in Legal Dept. Prepared and prosecuting patent applications and conducted patentability, infringement, validity searches for a broad range of polymer, chemical, petroleum, and mechanical technologies From 1981 to 1987 (6 years) Bartlesville, OK
JD @ The George Washington University Law School From 1982 to 1986 Bachelors @ Arizona State University Mark Montgomery is skilled in: Patent Strategy, Patent Prosecution, Intellectual Property, Due Diligence, Patents, Trademarks, Prosecution, Invention, Technology Transfer, Licensing, Biotechnology, Pharmaceutical Industry, Chemistry, Lifesciences, Commercialization, Molecular Biology, Biochemistry, R&D, Organic Chemistry, Contract Negotiation, FDA, Patent Litigation, Corporate Law, Legal Writing, Joint Ventures, Generic Drugs, Drug Discovery, Pharmaceutics, Patent Applications, Start-ups, Legal Opinions, Drug Development, Formulation, Biopharmaceuticals, Patentability, Polymers, Trade Secrets, Life Sciences