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Michelle E. O'Brien

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Ms. O’Brien has more than 15 years of experience representing both domestic and foreign clients of all sizes in the areas of patent procurement, litigation, and client counseling, with an emphasis on chemical and pharmaceutical technologies.  Exemplary areas of Ms. O’Brien’s expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; new chemical entities and formulations; and novel solid forms including polymorphs, cocrystals, and amorphous forms of compounds.

Ms. O’Brien’s patent procurement experience involves all aspects of preparing and prosecuting U.S. and foreign patent applications, including patent drafting and prosecution, as well as more complex matters such as reissue and reexamination proceedings and conducting oral hearings before the Board of Patent Appeals and Interferences.  Her litigation experience has focused on Hatch-Waxman litigation involving Abbreviated New Drug Applications, and has extended from pre-discovery stages through trial.

Ms. O’Brien’s current practice includes building and maintaining clients' patent portfolios, as well as analyzing competitors' patent portfolios.  Ms. O'Brien provides pre-litigation counseling to clients in order to maximize the value of their patent portfolios and avoid the valid rights of others, relying on her broad background and years of experience procuring complex patents, preparing patentability, validity, and infringement opinions, conducting pre-litigation and product-clearance analyses, and litigating patents.

Ms. O’Brien also lectures both domestically and abroad on topics such as inventorship, inequitable conduct, and patenting and litigating solid forms of compounds.

Education

  • Georgetown University Law Center (J.D.)
  • University of Toledo (B.A. Chemistry, cum laude)

Admissions

  • Maryland
  • District of Columbia
  • Registered to practice before the U.S. Patent and Trademark Office

Memberships

  • American Intellectual Property Law Association (AIPLA)
  • American Bar Association
  • Maryland Bar Association
  • Bar Association of the District of Columbia
  • American Chemical Society