WASHINGTON, D.C. (August 24, 2005) – LAWFUEL – The Law News Network – Enhancing its patent prosecution and high-end intellectual property strategic counseling work, senior patent attorney Edward D. Grieff has joined Venable LLP as a partner in the firm’s Washington office. Mr. Grieff, 39, joins from the DC office of Wilmer Cutler Pickering Hale and Dorr LLP, where he was a partner.
For over a decade, Mr. Grieff has counseled clients in all aspects of intellectual property protection and strategies, particularly in the chemical and biochemical areas. Working frequently with life science companies, his wide-ranging responsibilities have included preparing and prosecuting patents, providing design-around counseling, and advising on patentability, enforceability, validity, noninfringement, and freedom to operate issues.
Recent achievements include obtaining patents covering methods of using BiDil®, a treatment for African-American heart failure patients; the drug received FDA approval in June and was the first medication ever approved specifically for an ethnic group. Mr. Grieff submitted patents covering BiDil® for listing in the FDA’s Orange Book. He also has obtained patents, which are listed in the Orange Book, covering formulations for Tricor®, a cholesterol-reducing drug. In the past, he authored a number of patents issued to Dr. Alan G. MacDiarmid, the 2000 Nobel Laureate in Chemistry.
“Venable has a full spectrum IP practice and does it extremely well,” said Mr. Grieff. “The firm truly values core intellectual property work and there is a great opportunity here for broad-based IP counsel that complements Venable’s excellent patent litigation capabilities.”
A significant part of his work has involved IP audits and patent portfolio evaluation, as well as product life cycle management for pharmaceutical industry clients. Mr. Grieff said that he expects to help expand this already important part of Venable’s practice. He has conducted audits involving labeled nucleotides, small molecules and other key pharmaceutical products and medical devices. His expertise on the impact of the Hatch-Waxman Act and FDA exclusivity periods on product life cycles further strengthens his ability to counsel clients strategically.
These complicated analyses of patent portfolio content are increasingly important in helping companies make tactical decisions about what to do with their IP holdings, such as whether to let a patent expire or to renew a patent because of its impact on competitors’ ability to enter the marketplace.
“With Ed’s science background and broad patent experience, he is a significant addition to our team and will noticeably enhance the breadth of services we provide,” said Michael A. Sartori, Ph.D., chair of Venable’s Patent Prosecution Group. “His particular familiarity with chemical and biochemical-focused companies, including pharmaceuticals, meshes extremely well with the needs of our client base. In addition, his industry knowledge makes him a terrific complement to many areas of the firm’s practice, including products liability, food and drug law, litigation, and business transactions.”
A lecturer and author on leading IP subjects, Mr. Grieff presented in 2004 at the Intellectual Property Owners Association Annual Meeting and the FindLaw Corporate Counsel Center seminar on Global Pharmaceutical Strategies.
Mr. Grieff earned his J.D., cum laude, from Temple University School of Law (1993) and his B.S., magna cum laude, in Chemistry from Dickinson College (1988), where he was inducted into Phi Beta Kappa.