
Jeffrey I. Auerbach, Ph.D.
1901 Research Boulevard, Suite 400
Rockville, MD 20850
240-864-2433
301-762-4056 fax
Email: Jeffrey I. Auerbach, Ph.D.
Education
George Washington University,
Washington, DC
J.D., 1989
Yale University, New Haven, CT
M. Phil., Molecular Biophysics &
Biochemistry, 1977
Ph.D., Molecular Biophysics &
Biochemistry, 1981
Cornell University, Ithaca, NY
B.S., Biochemistry, Genetics
and Microbiology, 1975
Admissions
• United States Patent and Trademark Office
• Maryland State Bar
• District of Columbia Bar
• U.S. District Court for the District of Columbia
• U.S. District Court for the District of Maryland
• U.S. Court of Appeals for the
District of Columbia Circuit
• U.S. Court of Appeals for the Federal Circuit
Professional Affiliations
• Montgomery County, MD Bar Association
(IP Section co-chair, 2004 - 2007)
• Maryland State Bar Association
• American Bar Association
• Johns Hopkins University (adjunct faculty)
• Association of University Technology Managers
• American Intellectual Property Law Association
• Licensing Executives Society
• Certified Licensing Professional ™
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Jeffrey I. Auerbach, Ph.D.
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Practice Areas and Expertise
• Preparing and prosecuting U.S. and foreign-origin patent applications in a wide range of technologies including: biotechnology, molecular biology, chemistry, biophysics, immunology, software and electrical / computer engineering.
• Developing and implementing domestic and foreign patent application prosecution strategies for both large and small corporate entities, and universities.
• Extensive experience in evaluating patent rights and in preparing freedom to operate, invalidity and non-infringement opinions and analyses.
• Counseling clients regarding legal matters relating to Intellectual Property including patent portfolio management and filing strategies, freedom to operate issues, patent prosecution, post-issuance procedures (e.g., reissue and reexamination), trade secret law, licensing, and enforcement.
• Negotiating and preparing patent licensing agreements for both small companies and large corporations.
• Significant inter partes patent and trade secret litigation experience, at both United States Patent and Trademark Office, U.S. District Courts, the Court of Appeals for the Federal Circuit and, in a strategic capacity, the European Patent Office trial and appellate levels.
• Expertise in Technology Transfer.
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