USPTO Patent Attorney, Reg. No. 76,2015
Boston College Law School, JD
University of Virginia, BS, Biomedical Engineering – Material Science
Ms. O’Brien is a Litigation Associate in the Washington, D.C. office.
Ms. O’Brien has experience in a variety of intellectual property matters, including patent prosecution, patent transactions, and patent litigation. She has counseled technology companies, ranging from small start-ups to Fortune 500s, and 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 RuyakCherian LLP, Ms. O’Brien spent many years working for her university’s tech-transfer office and helped create valuable business relationships for investment 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.
Ms. O’Brien also 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 world-wide for phase III clinical trials. She also often worked with the Board of Directors and monitored SEC compliance for the public company.
In addition to the above, 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. She has also 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 also participated in drafting substantive filings for parallel litigation proceedings at the USPTO and in federal courts.
Ms. O’Brien received her undergraduate degree in Biomedical Engineering, with a concentration in Material Science, from the University of Virginia. She received her law degree from Boston College Law School and served as the Managing Editor of the intellectual property law journal.
Web-Based Publications As Prior Art Under Section 102, New Jersey Law Journal (April 3, 2017)
PTAB Bar Association