US Patent Law: Shining a Light on Key Procedural Differences between US and EP Law

Kiran Kang, Grüneberg and Myers – Intellectual Property Law

Innovative. Results-Driven. Professional. Dr. Kiran is a highly skilled patent agent who tackles all her patent cases with an analytic mind, and dives deep into the technology of her clients to get them the best results possible. Kiran is a triple-jurisdiction patent law practitioner who specializes in chemical patent prosecution and drafting. She offers practical, sensible, and insightful advice.

Kiran enjoys strategizing, researching, and thinking about the best solutions to empower her clients and get them the best patent protection possible in exchange for their contribution to public knowledge. She is particularly experienced in conducting examiner interviews, and regularly presents on comparative aspects of U.S. and European patent law. Kiran is currently also serving as the North American Representative for the CIPA (Chartered Institute of Patent Attorneys) Informals committee.

Kiran brings her extensive technical and legal expertise together at the top-notch, fast-paced patent specialist firm Grüneberg & Myers PLLC. Grüneberg & Myers is noted by Intellectual Asset Management (IAM Patent 1000) as one of the world’s leading IP firms. With many IP Stars, Super Lawyers, and Highly Recommended Patent Practitioners, Grüneberg & Myers can best serve your patent needs in the ever-changing field of patent law.

Eric Myers, Grüneberg and Myers – Intellectual Property Law

Eric Myers co-founded the Grüneberg and Myers firm in 2017, to offer clients high-quality patent counsel with personalized focus and client-centric efficiency. Since the founding of the firm, he has earned listings in Thomson Reuters’ Super Lawyers Rising Stars list for three consecutive years. In this time, IAM 1000 has also lauded the firm with a prestigious listing among the world’s top IP firms.

Mr. Myers brings perspective from the offices of decision-makers in highly contentious proceedings. He spent a year working under the Honorable Paul J. Luckern, the longest-serving Administrative Law Judge in the history of the International Trade Commission (ITC). Under the guidance of Judge Luckern, Mr. Myers handled responsibilities at the ITC including drafting claim construction, infringement, and validity findings for 337 investigations into the importation of alleged infringing goods. These experiences set the foundation for Mr. Myers’s commitment to high standards of quality in prosecution and counselling.

Mr. Myers counsels clients on a wide variety of patent issues including patentability, invalidity, noninfringement, design-around strategies, and challenging patent validity after issuance. In addition to patent prosecution, he opines on patents, portfolios, and landscapes in various contexts including pending acquisitions and potentially adversarial circumstances.

Companies across the globe, including many in North America, Europe, and Asia, have relied on Mr. Myers to carefully and timely evaluate various patent concerns. Appreciating that intellectual property issues can greatly impact clients’ business, Mr. Myers seeks to provide well-supported and clear analysis to guide clients’ decisions and obtain favourable outcomes.

Having studied developments in the patent and regulatory laws governing pioneer and generic pharmaceuticals, Mr. Myers provides counsel on issues unique to pharmaceutical intellectual property. His experience extends to matters of patent term extension, Orange Book listings, and IP-related aspects of FDA submissions.

Major multinational corporations, startup companies, and academic institutions alike trust Mr. Myers to obtain strong patent coverage from their applications before the U.S. Patent and Trademark Office (USPTO). Mr. Myers prosecutes patent applications in a wide range of technologies including biotechnology, pharmaceuticals, coatings, adhesives, cosmetics, hygiene products, foods, nutritional products, glass products, inks, toners, alloys, smart manufacturing, plastics and polymers, organic synthesis methods, petrochemicals, fuel additives, packaging materials, semiconductors, light-emitting materials, and textiles. Mr. Myers handles all stages of prosecution, frequently discussing matters with USPTO examiners and staff to efficiently resolve issues in clients’ applications. Mr. Myers also advocates before the Patent Trial and Appeal Board both in briefs and in oral hearings. In other exceptional cases in clients’ applications, Mr. Myers has been effective in filing petitions to the Director of the USPTO.

Prior to his career in patent law, Mr. Myers researched metal oxide nanoparticle synthesis and catalysis, culminating in an honours thesis as a member of the Schreyer Honors College at Penn State. Mr. Myers also investigated carbon nanotube applications in atomic force microscopy at the New Jersey Institute of Technology with support from the National Science Foundation.

Kirsten Grüneberg, Grüneberg and Myers – Intellectual Property Law

Dr. Kirsten A. Grüneberg co-founded Grüneberg and Myers PLLC in 2017. Less than 3 years later, the firm was listed in IAM Patent 1000 by Intellectual Asset Management as one of the world’s leading IP firms. Dr. Grüneberg has the rare honor of being listed repeatedly in IAM Patent 1000 as well as IAM Strategy 300 naming the world’s top IP professionals and IP strategists. In addition, Dr. Grüneberg was honoured as an IP Star by Managing Intellectual Property (MIP) and a Life Science Star by LMG Life Sciences. IAM notes: “A model of flexibility, speed, cost-effectiveness and quality, forward-looking Tysons, Virginia patent boutique Grüneberg and Myers has recorded striking growth of late. With prosecution the bedrock of its practice, the ensemble has been structuring robust protection for a host of global companies across multiple industries. It is not just a filing shop, though; strategic value is packed into every direction it provides on matters such as product clearance. Taking charge is Kirsten A Grüneberg, a chemical, biotech and pharmaceutical expert who provides ‘quick, straightforward but thorough advice’ and ‘achieves the maximum scope of protection in the most efficient way’. …Grüneberg has hired astutely, too, selecting individuals with in-house experience, international expertise and technical fluency.”

Dr. Grüneberg represents many of the world’s largest chemical, biotech, and pharmaceutical companies, including US Fortune 50 and Global Fortune 200 companies, several DAX 30 companies in Germany as well as Nikkei 225 companies in Japan.

In 2021, Dr. Grüneberg was a finalist for the “Patent Strategy Attorney of the Year” LMG Life Sciences Awards in the DC Area. She has successfully defended high-value pharma patents in post-grant proceedings, helping to secure business deals worth several hundreds of millions of dollars. Dr. Grüneberg also has significant experience in Hatch-Waxman-related matters (including patent term extension, Orange Book listings, and IP-related aspects of FDA submissions) as well as IP issues in connection with mergers and acquisitions in the U.S., Germany, Switzerland, Japan, and China.

Areas of technical expertise further include polymers, automotive additives, coatings, toners, 3D-printing technology, Industry 4.0, adhesives, building materials, pharmaceuticals including small molecules and biologics, medical devices, diagnostics, drug delivery systems, speciality chemicals including pigments, catalysts, lubricants, liquid crystals, surfactants, surface modified materials, nanotechnology, semiconductors, and battery materials.

Dr. Grüneberg is active in the areas of opinions and counseling, post-grant proceedings including inter partes review and reexaminations, intellectual property portfolio management and development, chemical as well as pharmaceutical/medical devices patent prosecution. She is a native German speaker and regularly visits clients in Europe and Asia to update them about the latest developments in U.S. patent law and to work closely with them on selected high-profile projects.

Dr. Grüneberg is a contributor to the treatise entitled Post-Grant Proceedings Before the Patent Trial and Appeal Board, published by Practicing Law Institute. The treatise guides readers through the process of initiating a post-grant proceeding, taking discovery, seeking sanctions, proposing and opposing claim amendments, effectively advocating at the oral hearing, appealing to the Federal Circuit, and handling a wide array of issues involving co-pending district court litigation.

After receiving her Ph.D. in organic chemistry, magna cum laude, from the Technische Universität Berlin in Germany, Dr. Grüneberg was awarded a Lynen-Fellowship from the Alexander von Humboldt Foundation in Germany. This fellowship was to perform research during a three-year period at the Center for Bio/Molecular Science and Engineering of the U.S. Naval Research Laboratory. She was a visiting professor at the Georgetown University Medical Center and also worked as a senior scientist at Geo-Centers, Inc./U.S. Naval Research Laboratory and as a research scientist at the Max-Planck Institute of Colloids and Interfaces in Berlin. Dr. Grüneberg received her Masters of Science in organic chemistry, summa cum laude, and her Bachelors of Science in chemistry/chemical engineering, magna cum laude, from the E.-M.-Arndt-University in Germany.

Dr. Grüneberg has published more than 50 scientific papers and conference presentations in the areas of liquid crystals, display technology, organic thin films, polymers, surfactants, and antimicrobial materials. She has been an invited speaker regarding her research at international conferences in the U.S., Japan, Germany, Italy, Switzerland, and South Korea, and is an inventor on several U.S. and foreign patents.