ELIZABETH O’BRIEN

img9788

Ms. O’Brien is an Associate in our Washington, D.C. office.  She has experience in a variety of intellectual property matters including patent prosecution, patent transactions, and patent litigation.  She has counseled technology companies ranging in size from startups to Fortune 500s.  She has helped those clients protect, monetize, and enforce their patent rights.

Her litigation practice involves drafting motions and briefings in Federal Court litigation, drafting petitions and responses in USPTO proceedings, preparing infringement/invalidity analyses, analyzing claim construction arguments, and participating in fact and expert discovery.

Prior to joining Cherian LLP, Ms. O’Brien spent years working for her university’s tech-transfer office and helped create valuable business relationships for investments in R&D.  Her focus was commercializing novel materials, surface coatings, and texturization methods directed at, for example, MEMS devices.  She has conducted prior art searches and freedom-to-operate analyses, drafted patent applications, prepared material transfer agreements, and negotiated licensing agreements.

Prior to joining our firm, Ms. O’Brien has experience working as in-house counsel for a pharmaceutical company and understands the needs of client-companies and the constraints that affect business decisions.  She has drafted and negotiated development and commercialization agreements with drug manufacturers worldwide for phase III clinical trials.  She also worked with the Board of Directors and monitored SEC compliance for the public company.

In addition, Ms. O’Brien has been an Associate at a boutique intellectual property law firm drafting and prosecuting patent applications directed at orthopedic and cardiovascular devices, as well as lithium-ion batteries.  Shae has used valuation methods to analyze existing patent portfolios, compiled due diligence reports for potential patent acquisitions, and counseled clients on claim scope in different jurisdictions.   She has participated in drafting substantive filings for parallel litigation proceedings at the USPTO and in Federal Court.

Ms. O’Brien served as Managing Editor of the Intellectual Property law journal at Boston College Law School.

Practices:
Patent Litigation, IP Transactions & Licensing, Patent Prosecution and Inter Partes Review proceedings, Intellectual Property Strategies

State Bar Admission and USPTO Registration:
New Jersey
USPTO Patent Attorney, Reg. No. 76,2015

Court Admissions:
U.S. Patent and Trademark Office

Education:
Boston College Law School, JD
University of Virginia, BS, Biomedical Engineering – Material Science

Professional Affiliations:
PTAB Bar Association
ChiPs, Women in IP