Wendy A. Choi

Wendy A. Choi

Wendy Choi focuses her practice on patent prosecution. She has more than 15 years experience representing clients in the chemical, pharmaceutical and biotechnology industries, ranging from start-up companies to large corporations in both domestic and international patent matters.

Selected Experience

· Handled complex U.S. and foreign patent prosecution, including appellate practice, interferences, reexaminations, reissues, and foreign opposition practice.

· Counseled clients on patentability, validity, and freedom-to-operate opinions, inventorship determinations, employee issues, and trade secret protection.

· Managed IP portfolios and alignment of business strategies which included transactions and extensive due diligence for IP transactions, licensing and litigation support.

· Developed and implemented defensive and offensive IP strategy for $3 billion business, including paints, industrial coatings, digital imaging, leather chemicals, paper, fiber/textiles, adhesivers/sealants utilizing acrylic, polyurethane, polyamine, and polyester technology.

· Prepared and prosecuted U.S. and foreign patent in chemical and business method areas, including extensive European practice, foreign opposition, interference, reissue and reexamination work.

Background

· Board Member, Atlanta Bar Association, IP Section.

· Member, State Bar of Georgia, IP Section.

· Member, Biotechnology Industry organization.

· Member, IPO Committee of Patent Law and Practice (International).

· Member, AIPLA Chemical Practice, Diversity in IP Law, Patents - Relations with the USPTO, and Women in IP Law Committees.

· Chair (former), Philadelphia Intellectual Property Law Association, Chemical Practice Committee.

· Board of Advisor Member, Metro Atlanta Chamber of Commerce (2005 - 2009).

· Temple University School of Law Women's Initiative.

· Mentor to Georgia State University, John Marshall, Emory University, and Temple University School of Law students.

· Faculty of Practising Law Institute.

· Volunteer, Recording for the Blind.

· Volunteer, Indigent Legal Aid Program.

Publications, Articles and Speeches

· Faculty member and speaker at PLI's Fundamentals of Patent. Prosecution -- A Boot Camp for Claim Drafting (2003-2009).

· Speaker at American Chemical Society National Meeting on "Current Trends in Patent Procurement and Litigation," (August 25, 2004).

· Lead panel in legal track at BIO Conference (2005).

· Presented at Law Seminars International's Managing Patent Prosecution and Litigation on Special Issues Relating to Biotechnology Patents (May 22, 2006).

· Co-chaired Law Seminars International Complex IP and Technology Transactions (October 23-24, 2006).

· Presented at Law Seminars International Mastering Complex Intellectual Property Licensing Seminar (December 13, 2006).

· Presented at Philadelphia IP Law Association on CREATE Act.

· Presented at State Bar of Georgia IP Section Springposium (April 28-30, 2006).

· Presented at Monte Jade's China Symposium Opportunities and Challenges in China: IP Protection Issues and Progress in China (April 7, 2007).

· Presented at Philadelphia IP Law Association on Special Issues Relating to Biotechnology Patents (June 15, 2007).

· Presented at Joint Patent Seminar (New York) titled Selecting an International Search Authority (ISA): How does the KIPO compare to the USPTO and EPO? (April 30, 2008).

· AIPLA Panel for Midwinter Meeting (January 2009).

· Interviewed for Metropolitan Corporate Counsel article on Diversity and the Southeast (February 2006). Contributed to "Preparing for Patent Reform" article in MX magazine (January/February 2007). Authored paper "Caveat Licensor? MedImmune v. Genentech" published in TechJournal South (June 2007).

· Co-authored paper "Patent term and double dipping" for IP in the life sciences industries 2009 supplement for Intellectual Asset Management magazine.

· Notable Cases: In re Mc-Neil-PPC, Inc. (Fed. Cir. Docket No. 2008-1546).