Photo of Mary  Sylvia

Education

J.D., magna cum laude, American University Washington College of Law

M.S., University of South Florida

B.S., University of Wisconsin-Madison; Dean's List

Clerkships

Law Clerk for the Honorable Raymond C. Clevenger III, U.S. Court of Appeals for the Federal Circuit (1995)

Bar and Court Admissions

District of Columbia Bar

Maryland Bar

U.S. Court of Appeals for the Federal Circuit

U.S. District Court for the District of Maryland

U.S. Patent and Trademark Office

Mary has nearly 30 years of experience in microbiology and patent law. Trained initially as a molecular virologist, she focuses primarily on biotech and pharmaceutical patent law and the development of intellectual property strategy in both procurement and litigation settings. As a former judicial clerk to (now Senior) Circuit Judge Raymond C. Clevenger III of the U.S. Court of Appeals for the Federal Circuit, Mary combines appellate practice with patent litigation strategy. Having served as in-house counsel, as well as working in molecular biology and genetics labs prior to law school, she brings a unique perspective to her work. She understands not only the technologies with which clients work, but the ways in which an intellectual property portfolio can add value from a business development angle.

Mary currently teaches as an adjunct at Georgetown University, and formerly taught as an adjunct at the American University Washington College of Law. She also served as the first director of the University of Maryland School of Law's IP clinic.

Representative Experience

  • Works with major pharmaceutical corporations in biologics, small molecule, and device technologies.
  • Provides patent procurement services, freedom to operate assessments, due diligence analysis, and invalidity and non-infringement opinions.
  • Strengthened a biologics patent portfolio, including Hatch-Waxman term extension, central to a transaction worth more than $200 million.
  • Works with start-up companies on development of IP portfolios, including biologics, small molecules, and software technologies.
  • Counseled drug delivery start-up through process of developing IP rights in the area: from first provisional patent to now-developed global portfolio of more than forty patents, negotiated numerous collaboration and license agreements, and ensured that client was provided with freedom to operate and acquired IP rights in order to sustain long-term security and international success.
  • Counseled oncology and recombinant antibody client in building a biotech patent portfolio and ensured the creation and maintenance of a high-value portfolio that would protect and enhance business goals.
  • Represents a major university in patent procurement projects involving vaccine technology. Assisted in development of strategy that allowed client to out-license technology to major vaccine developers.
  • Assisted in many other patent procurement projects for universities and has negotiated licensing and collaboration agreements to allow technologies developed in universities to be shared with big pharma corporations and other organizations.
  • Working with a public nonprofit charity organization to obtain trademark protection for uniquely grown and harvested coffee, and to protect the client’s distinct charity work in the area of restoration and preservation of native plant communities in northern Virginia and the Dominican Republic.

Professional Experience

  • Adjunct Professor, Georgetown University (2011-Present)
  • Adjunct Professor, American University Washington College of Law (2005-2007)
  • University of Maryland School of Law
    • Assistant Professor (2002-2004)
    • Inaugural Director, Maryland Intellectual Property Legal Resource Center (2002-2004)

Affiliations

  • Federal Circuit Bar Association (FCBA)
  • Maryland State Bar Association (MSBA)

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