Overview
Judy Mohr, Ph.D., helps companies maximize product protection and intellectual property (IP) value by focusing on the business goals of the company and designing a patent portfolio to meet those objectives. Her practice encompasses US and non-US patent procurement, post-grant proceedings (including reexamination and inter partes review), IP due diligence on the investor side and the company side, negotiation of agreements, and development of IP strategies. She assists companies in the pharmaceutical, medical diagnostics, medical device, and gas and liquid separations industries.
Drawing on her education in biology, chemistry and chemical engineering, and her decade of industrial experience as an engineer in the polymer and pharmaceutical formulation fields, Judy provides a unique technical background that allows her to quickly assess patent portfolios and provide strategic advice. This is a key advantage in the implementation of patent strategies for pharmaceutical companies, as she is able to understand and communicate the technology to the patent examiners. Judy has worked with companies to develop patent portfolios in the pharmaceutical, drug delivery, diagnostics and water clean-up fields.
Judy has experience counseling emerging and mature life science companies in a broad range of matters, including patentability assessments, freedom to operate analyses, infringement/non-infringement evaluations, and IP due diligence in licensing transactions, financings, mergers and acquisitions. Judy frequently advises her pharmaceutical clients on topics related to Food and Drug Administration (FDA) Orange Book listings and the Hatch-Waxman Act. She also works with the IP litigators and assists clients in patent litigation matters.
Judy earned her doctoral degree in chemical engineering, with a focus in polymer properties and small molecule transport through polymer films, and her bachelor’s degree in biology.
Results
- Led IP diligences for a diagnostic testing company in several acquisitions of complementary businesses.
- Manages the patent portfolio for Quidel Corporation (NASDAQ: QDEL), a medical manufacturing and diagnostic testing company, as well as assisting in diligence for corporate transactions
- Provides strategic patent advice and handles patent matters for Corium (NASDAQ: CORI), a leader in design and manufacture of polymer film products for drug delivery
- Serves as IP Counsel to Heron Therapeutics, Inc. to manage its patent portfolio and advise on patent-related regulatory matters
- Serves as IP Counsel to advise on patent strategy and handle patent application preparation and worldwide filings for many start-up companies, including KAI Pharmaceuticals (acquired by AMGEN), Hallux Inc., and Delpor
Recognitions
- LMG Life Sciences 2022, Shortlisted for Patent Strategy Attorney of the Year – California
- LMG Life Sciences 2021-2022 – Leading Life Sciences Lawyer
- The Best Lawyers in America, Biotechnology and Life Sciences, 2023 to 2024
- The Legal 500 US, 2021 and 2023
- IAM Patent 1000 – The World’s Leading Patent Practitioners, 2014 to 2023
- Daily Journal, Top Intellectual Property Lawyers, 2022
- Acritas Stars, listed among independently rated lawyers, 2020
- LMG Life Sciences Star, 2012 to present
- Daily Journal, Top 25 California Portfolio Managers and Prosecutors, 2015
- Euromoney’s Americas Women in Business Law, Shortlisted for Life Sciences Lawyer of the Year, 2021
Community
- Former Advisory Board Member and Lecturer, Center for Innovation & Entrepreneurship, Santa Clara University
- Program Lecturer, SPARK, Stanford University
