Marcella M. Bodner has nearly 20 years of experience formulating both offensive and defensive intellectual property strategies that create and maximize value through patent portfolio development, licensing, and enforcement. A critical component of such strategies is an emphasis on risk assessment and resource and budget management and allocation.
Ms. Bodner’s experience includes the patentability assessment of new inventions, patent landscape studies, the preparation and prosecution of patent applications in the United States and worldwide, appeal of rejections at the Patent and Trademark Appeals Board, defense of third party oppositions at the European Patent Office, and opinions regarding infringement and freedom-to-operate for products and processes.
For those engaged in joint ventures and other collaborations, Ms. Bodner negotiates and drafts contracts relating to the development, ownership, and transfer of patents. This includes research collaboration agreements, non-disclosure (secrecy) agreements, assignments, joint venture agreements, toll manufacturing agreements and technology licenses.
Ms. Bodner applies her patent prosecution and technical expertise on behalf of clients enforcing or defending against the enforcement of patents in United States federal courts and in post grant proceedings at the United States Patent and Trademark Office including inter partes reviews (IPRs), covered business method reviews (CBMs), post-grant reviews (PGRs) and ex parte reexaminations.
With a strong chemical engineering background, Ms. Bodner’s technical expertise includes chemical compositions and methods for making them, uses for chemical compositions including coatings, detergents, nutritional compositions, health and beauty products, pharmaceuticals, plastics, specialty monomers, marker/tracing compositions, and metal oxide catalysts. She also has substantial technical expertise with mechanical devices, their components and methods of operation, such as process equipment, safety equipment, biological modeling systems, medical devices, and surgical implants.
As published in: Bloomberg Law April 7, 2020
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As published in: Bloomberg Law August 29, 2019
Iancu's Impact on Patent Board Plays Out in Precedents
As published in: Bloomberg Law May 10, 2019
As published in: BioCentury May 9, 2019
As published in: Law360 January 9, 2019
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Intellectual Property Law May 19, 2020Marcella M. Bodner
World Intellectual Property Review April 23, 2018Marcella M. Bodner
Law360 April 20, 2018Marcella M. Bodner