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George M. Gould

George M. Gould

Counsel, Intellectual Property

George M. Gould is the former Vice President of Licensing and Corporate Development and Chief Patent Counsel of Hoffmann-La Roche Inc. and has served on the Board of Directors of a number of biopharma companies. Among Mr. Gould’s achievements is the development of the “two armed patent strategy,” whereby a company patents the purified natural peptides and proteins, as well as synthetic or recombinant versions of these molecules. Mr. Gould has extensive experience patenting inventions in the following technologies: protein biochemistry, recombinant DNA, monoclonal antibodies, antiviral drugs, and diagnostics. In addition, Mr. Gould has over 40 years of experience in the area of licensing, with large pharmaceutical firms as well as start-up biotech companies. He has served as a patent or licensing expert witness in more than 40 cases, including several renowned biotech litigations.

Areas of Focus

Biopharma Patent Prosecution

  • Drafts patent applications to protein, DNA, bioassay, diagnostic inventions, and prosecutes before the United States Patent Office (PTO)
  • Handles appeals to the PTO Patent Trial and Appeal Board
  • Handles appeals to the Court of Appeals for the Federal Circuit (CAFC)

Validity and Infringement Opinions

  • Supervises Prior Art Searches and analyzes Prior Art references against relevant patent claims
  • Analyzes prosecution history of relevant patents
  • Analyzes subject product and apply claim limitations

Licensing

  • Drafts licensing agreements
  • Provides analysis of meaning of license terms in existing contracts
  • Identifies issues that might affect enforceability of license terms
  • Provides consulting services to assist in license negotiation process

Credentials

Education

Columbia Law School (J.D.)

Johns Hopkins University (B.A.)

New York University School of Law (LL.M.)

Professional Admissions

State of New York

Court of Appeals for the Federal Circuit

Supreme Court of the United States

United States Patent and Trademark Office (Reg. No. 20,970)

Professional Activities

Association of Corporate Patent Counsel, NJIPLA

Legal Employment

Adjunct Professor, Seton Hall University School of Law