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Troy A. Groetken
Shareholder
Email. tgroetken@mcandrews-ip.com
Tel. (312) 775-8259
Practice Areas
Global Intellectual Property Portfolio Analysis, Counseling & Management; Complex Chemical, Small-molecule Pharmaceutical, and Biotechnological Patent Prosecution; Intellectual Property Acquisition, Divestiture, and Licensing; Clearance, Freedom to Operate & Invalidity Opinions; Trademark Prosecution; Antitrust; Intellectual Property Landscaping
Education
Drake University, College of Pharmacy, B.S., Pharmacy, cum laude, Rho Chi, 1994
Drake University Law School, J.D., cum laude, 1997
John Marshall Law School, LL.M., Intellectual Property Law, with Honors, 1998
Bar Admissions
Admitted to practice in Illinois and Iowa. Member of the bars of the United States Supreme Court, Federal Circuit Court of Appeals, and District Courts for the Northern District of Illinois and the Southern District of Iowa. Registered to practice before the U.S. Patent and Trademark Office. Registration Certificate (Roll of Patent Agents), Canadian Patent Office.
Pharmaceutical Admissions
Registered, licensed pharmacist in Illinois, Iowa and Michigan.
Professional Experience
Troy A. Groetken is a shareholder with McAndrews, Held & Malloy and he is also a consultant clinical pharmacist registered and licensed in Illinois, Iowa and Michigan. He has approximately 15 years of experience in the intellectual property field and over 20 years of experience in the pharmaceutical, biotechnological and chemical fields.
As a registered U.S. patent practitioner, Troy regularly counsels international and Fortune 100 and 500 clients regarding advanced patent litigation and procurement matters; advises upon global licensing issues coordinated with client-centered business modeling and approaches; analyzes and addresses complex global intellectual property transactional issues, including due diligence analysis, valuation assessment, competitive landscape review, white space analysis, opinion development, and global portfolio management matters involving chemical, pharmaceutical and biotechnological technological disciplines encompassing new drug (small-molecule, recombinant, combinational technologies, etc.) entities, API development, generic pharmaceuticals, biosimilars, pharmaceutical conjugates and combinatorials, surfactant technologies, agricultural compositions, food technologies, gellants, polyols, lubricants, coatings, laundry and cleaning products, inorganic and organic synthesis products, pharmaceutical supplements, personal care and cosmetic formulations, oil and gas technologies, alternative fuels, fuel cells, renewable energies, among others. Troy also regularly counsels Fortune 100 mechanical and electrical companies with respect to litigation and global portfolio management matters ranging from heavy-duty industrial products to small appliances. Prior to practicing patent law, Troy has worked as a clinical consultant pharmacist, supervised drug research programs, evaluated drug management protocols, and performed drug treatment trials on behalf of the FDA and various hospital and research institutions.
Troy was recently selected by his peers for inclusion in the 2012 edition of The Best Lawyers in America and he was also selected as a Rising Star by the Illinois Super Lawyers independent survey for 2008 and 2009. Further, Troy was selected by his peers as one of 40 Illinois Attorneys Under Forty to Watch, which is an independent selection process conducted by Law Bulletin Publishing Company, in which there were 700 nominees extensively patent law peer/client reviewed, and only 40 selected in 2009.
PUBLICATIONS AND BLOGS SAMPLING
U.S. Patent Reform Bill Passes, Representing New Costs and Opportunities, The Rose Sheet, pgs. 10-12, September 26, 2011.
Using Patents As A Business Asset in Today's Economy, Life Science Leader, July 2011. View File.
The Pendulum Swings Back: The Impact of Recent SCOTUS and Federal Circuit Cases, Northwestern Journal of Technology and Intellectual Property, Summer 2008, Vol. 6, No. 3.
Hard Times & Portfolio Management, Executive Counsel Magazine, October/November 2010, pp. 24-31.
Q&A With Troy A. Groetken, All Around the Water Cooler (Blog), October 18, 2010
Former publisher for The Patent Lawyer magazine of The Association of Patent Law Firms (APLF), 2007-2009
REPRESENTATIVE SPEAKING ENGAGEMENTS
U.S. Patent Law for European Patent Practitioners, U.S. and EPO Patent Law Update Symposium Munich, 2006 - 2011
Polyol Competitive Landscapes April 2006
Patent Prosecution Basics May 2006
Strategic Management of Intellectual Property February 2007
KSR Intl Co. v. Teleflex Inc., - Practically Speaking What This Means To You, Association of Patent Law Firms (APLF) May 11, 2007
U.S. Updates in Patent Law and USPTO Rules September & November 2007
Proposed Rule Changes of the USPTO, U.S. and EPO Patent Law Update Symposium Munich, September 20, 2007
Strategic Positioning of Intellectual Property, Chicago Intellectual Property Law Alliance (CIPLA) (Panelist) 2007 - 2011
Recent Developments and Outcomes of U.S. Patent Case Law, Northwestern Law School (Panelist) April 2008
Updates in U.S. Patent Law & Practical Tips to Consider in Response, IL Tech Summit April 3, 2008
Recent Changes in Patent Law & Practical Implications of the MedImmune & Quanta Decisions, Licensing Executives Society August 26, 2008, Chicago Bar Association IP Committee September 18, 2008
Recent Court Decisions in Pharmaceutical and Chemical Patent Cases, U.S. and EPO Patent Law Update Symposium Munich, September 23, 2008
Managing Clients Billing Practices & Best Client Management Practices: The Good The Bad And The Ugly, Association of Patent Law Firms (APLF) October 22, 2008
Protecting Global IP Assets Practical Considerations for Cost-Effective Management of Globally Based Patent Portfolios, Association of Patent Law Firms (APLF) February 11, 2009, Association of Patent Law Firms (APLF) September 28, 2009
U.S. Enablement & Written Description Practice for European Practitioners, U.S. and EPO Patent Law Update Symposium Munich, February 24, 2009
Global Portfolio Management & Cost Saving Strategies, Intellectual Property Law Association of Chicago (IPLAC) January 13, 2010
Your Ethical Responsibilities Lawyers Helping Lawyers, U.S. and EPO Patent Law Update Symposium Munich, February 24, 2010
U.S. Patent Law Reform Update, Linus Pauling Biotech / Pharma Symposium May 1, 2010
In-House Counsel on IP Portfolio Management in the Current Economic Conditions, Association of Patent Law Firms (APLF) June 9, 2010
The Roles and Practical Outcomes of Patent Agents in Intellectual Property Law, Intellectual Property Law Association of Chicago (IPLAC) May 18, 2010
Biosimilars Legislation in the U.S., U.S. and EPO Patent Law Update Symposium Munich, May 3, 2011
KSR Practical Approaches, American Intellectual Property Law Association (AIPLA) Roadshow June 23, 2011
TRIAL/REEXAMINATION/REISSUE/OPPOSITION EXPERIENCE
Ciba Vision Wesley Jessen v. Bausch & Lomb (5/31/01 5/09/05)
Subject: Contact lenses
CIBA Vision v. Bausch & Lomb (09/17/03 08/27/04)
Subject: Contact lenses
CIBA Vision v. Bausch & Lomb (03/08/99 08/27/04)
Subject: Contact lenses
Bausch & Lomb v. CIBA (07/14/04 11/06)
Subject: Contact lenses
Shire LLC v. Travis C. Mickle, Ph.D. and KemPharm, Inc. (09/29/10 - )
Subject: Pharmaceutical conjugates
Kao Professional Salon Services v. Stepan Company (European Opposition) (2006)
Subject: Surfactant technology
Akzo Nobel v. Stepan Company (European Opposition) (2006)
Subject: Surfactant technology
Cognate Therapeutics Inc.; Harvey Vaughan John Adams v. Osiris Therapeutics, Inc. (European Opposition) (2008)
Subject: Muscle regeneration using stem cells
PROFESSIONAL ORGANIZATIONS
Association of Patent Law Firms (APLF)
President 2004 2006
Vice-President 2007 2011
Board Member 2003 Present
Chair, Federal Judges Symposium, Drake University 2006
Chair, Alternative/Renewable Energies Symposium, Drake University 2007
Chair of Annual Meeting 2003
Licensing Executives Society (LES)
Illinois Biotechnology Industry Organization
American Intellectual Property Law Association (AIPLA)
Intellectual Property Law Association of Chicago (IPLAC)
American Pharmaceutical Association (APhA)
Federal Circuit Bar Association
RECENT REPRESENTATIVE PATENTS
Aeronautics
7,841,084
Biologics
7,892,829; 7,892,268; 7,875,270; 7,850,987; 7,785,619; 7,776,917; 7,772,222; 7,727,546; 7,527,933; 7,514,074; 7,491,388; 7,429,461; 7,320,786; 7,288,106
Chemical
7,915,367; 7,914,899; 7,884,064; 7,884,057; 7,879,790; 7,867,951; 7,799,841
Mechanical
D606,398; D595,574; D580,757; 7,841,912; 7,840,429; 7,723,997; 7,578,708
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