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 ™

Jeffrey I. Auerbach, Ph.D.


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.