O'Brien Jones PLLC - Intellectual Property Law

Michelle E. O'Brien

Registered Patent Attorney

Ms. O’Brien has more than 10 years of experience representing both domestic and foreign clients in the areas of patent procurement, litigation, and client counseling, with an emphasis on chemical and pharmaceutical technologies. A significant portion of her experience has involved patenting and litigating solid forms of compounds, including polymorphs.

Ms. O’Brien’s patent procurement experience involves all aspects of preparing and prosecuting U.S. and foreign patent applications, including basic patent drafting and prosecution, as well as more complex matters such as reissue and reexamination proceedings and conducting oral hearings before the Board of Patent Appeals and Interferences. Her litigation experience has focused on Hatch-Waxman litigation involving Abbreviated New Drug Applications, and has extended from pre-discovery stages through trial.

Ms. O’Brien’s current practice includes creating and maintaining clients' patent portfolios as well as analyzing competitors' patent portfolios. Ms. O'Brien provides pre-litigation counseling to clients in order to maximize the value of their patent portfolios and avoid the valid rights of others, relying on her broad background and years of experience procuring complex patents, preparing patentability, validity, and infringement opinions, conducting pre-litigation and product-clearance analyses, and litigating patents.

Prior to founding O'BRIEN JONES, PLLC, Ms. O'Brien was an attorney with the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, DC. While there, a significant portion of her practice included conducting due diligence investigations on both U.S. and international patent portfolios, with an emphasis on pharmaceuticals, cosmetics, and polymer chemistry.

Ms. O’Brien also lectures both domestically and abroad on topics such as inventorship, inequitable conduct, and patenting and litigating polymorphs.

Education

Juris Doctor, Georgetown University Law Center
Bachelor of Arts, cum laude, Chemistry, University of Toledo

Bar Admissions

Maryland
District of Columbia
Registered to practice before the U.S. Patent and Trademark Office

Professional Affiliations

American Intellectual Property Law Association
American Bar Association
Maryland Bar Association
Bar Association of the District of Columbia
American Chemical Society

Susanne T. Jones

Registered Patent Attorney

Ms. Jones is experienced in a wide array of patent law, including patent preparation and prosecution; patent reissue and reexamination proceedings; interference practice; strategic national and international patent portfolio development and management; and patentability, validity, infringement, and due diligence opinions. She also has been involved in both district court patent litigation and Federal Circuit appeals.

Ms. Jones’s technical expertise includes various aspects of biomedical, electro-mechanical, and mechanical engineering, and she has served clients in highly competitive technical areas, including, biomedical devices, cosmetic devices, packaging, heat exchange systems, optics, and business methods.

Ms. Jones’s experience and expertise most recently has focused on providing a range of patent services to clients and developing patent strategies that complement the client’s business objectives. In particular, she enjoys developing and managing patent portfolios for the world market, for both start-up and larger companies. To this end, she also analyzes competitors’ patent portfolios and products to counsel clients regarding enhancement and enforcement of their patent portfolio, contemplated products, potential design-arounds, and acquisition of technology.

Prior to founding O’Brien Jones PLLC, Ms. Jones was an attorney with the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, DC. While there, a large part of her practice included working with medical device companies to strategically develop and manage national and international patent portfolios and to monitor competitor activity and provide counseling regarding the same.

Ms. Jones also worked as a patent examiner at the U.S. Patent and Trademark Office, where she examined patent applications for a variety of mechanical and electro-mechanical devices, focusing in the areas of HVAC control systems, waste handling systems, emission control systems, and drying systems. Prior to her patent career, she received a National Science Foundation Fellowship and researched evaporative spray cooling under a grant from the Building and Fire Research Laboratory at the National Institute of Standards and Technology, and worked for the U.S. Naval Surface Warfare Center in the Explosions Damage Branch of the Energetic Materials Division.

Education

Juris Doctor, Order of the Coif, Georgetown University Law Center
Master of Science, magna cum laude, Mechanical Engineering, University of Maryland
Bachelor of Science, summa cum laude, Mechanical Engineering, University of Maryland

Bar Admissions

Virginia
District of Columbia
U.S. Court of Appeals for the Federal Circuit
Registered to practice before the U.S. Patent and Trademark Office

Professional Affiliations

American Intellectual Property Law Association

Camille Ciesliga

Registered Patent Attorney

Ms. Ciesliga has several years of experience in intellectual property law and corporate litigation. Her primary focus is in the biotechnology, chemical, and mechanical technology fields and she concentrates her practice in patent drafting, domestic and foreign prosecution, and litigation, as well as trademark prosecution and litigation. Ms. Ciesliga adapts her practice to meet the business goals of her clients by providing excellent personalized legal advice. She has extensive experience in a wide range of technologies including vaccine formulations, pharmaceuticals and drug development, nutraceuticals, gene sequencing, molecular biology, organic compounds and synthesis methods, thermoplastic resins, polymers, expandable structural materials, and medical devices, automotive battery clamps, piston rings, driveline sealing components, and electro-deposition coatings.

Prior to joining O’Brien Jones, PLLC, Ms. Ciesliga was an associate attorney at Rader, Fishman & Grauer, PLLC in Washington, D.C., and Of Counsel at Cermak Nakajima, LLP in Alexandria, VA.

Education

Juris Doctor, with distinction, Thomas M. Cooley Law School
Master of Laws, Intellectual Property, Thomas M. Cooley Law School
Master of Business Administration/Master of Science, Biotechnology, Johns Hopkins University (Current Degree Candidate)
Bachelor of Science, Biology, Michigan State University

Bar Admissions

Michigan
US District Court for the Eastern District of Michigan
Registered to practice before the U.S. Patent and Trademark Office

Professional Affiliations

American Intellectual Property Law Association
American Bar Association
American Association for the Advancement of Science

Kari Footland

Registered Patent Attorney

Ms. Footland has several years of experience in patent law, including all aspects of patent preparation and prosecution. She counsels clients on effectively protecting their intellectual property through patent procurement and is versed in managing patent portfolios that include filings both domestic and abroad. The technical areas for which Ms. Footland has prepared and prosecuted patent applications include computer hardware, computer software, business methods, telecommunications, electronics, video processing, robotics, automotive engineering, optics and displays.

Prior to joining O’Brien Jones, PLLC, Ms. Footland was an associate attorney at Staas & Halsey, LLP in Washington, D.C. where she represented both domestic and foreign clients. She also interned at the U.S. Patent and Trademark Office where she searched for prior art and prepared Office Actions relating to electromechanical technologies.

Education

Juris Doctor, William & Mary School of Law
Bachelor of Arts, Major in Government, Minor in Electrical Engineering, University of Virginia

Bar Admissions

Virginia
Registered to practice before the U.S. Patent and Trademark Office

Professional Affiliations

American Intellectual Property Law Association

Jill DeMello Hill

Registered Patent Attorney

Ms. Hill has over 10 years of experience examining, creating, enforcing, and defending patent rights, particularly in medical device and automotive technologies. Focusing on providing a full scope of services that are tailored to clients' individual business goals, she provides a range of patent counseling including preparing infringement, validity, and due diligence opinions, preparing and prosecuting patent applications, reexaminations, reissues, appeals, and interferences. Ms. Hill is experienced in reviewing and preparing license agreements, in design patent procurement and protection, and in district court infringement litigation and appeals to the U.S. Court of Appeals for the Federal Circuit.

Prior to joining O’BRIEN JONES, PLLC, Ms. Hill was an associate at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, and served as a law clerk to the Honorable Richard Linn at the U.S. Court of Appeals for the Federal Circuit. While in law school at George Washington University, Ms. Hill gained experience working as an examiner at the U.S. Patent and Trademark Office and as a student associate.

Ms. Hill has served as an adjunct professor of legal writing at George Washington University Law School. She received her J.D., with honors, from George Washington University Law School and her B.S. in Mechanical Engineering from Columbia University. Ms. Hill is admitted to practice in California, the District of Columbia, Virginia, and before the United States Patent and Trademark Office. Prior to her patent career, she was a systems analyst with Andersen Consulting, designing and developing software for such clients as Sikorsky Aircraft and the United Parcel Service.

Education

Juris Doctor, with honors, George Washington University Law School
Bachelor of Science, Mechanical Engineering, Columbia University

Bar Admissions

Virginia
District of Columbia
California
U.S. Court of Appeals for the Federal Circuit
Registered to practice before the U.S. Patent and Trademark Office

Professional Affiliations

American Intellectual Property Law Association

David S. Hyams

Registered Patent Attorney

Mr. Hyams has more than 10 years of experience representing clients in a wide range of intellectual property issues. He has extensive experience with software and technology licenses, open source software licensing and use, content licensing, data privacy issues, and intellectual property diligence and deal negotiation for corporate mergers, acquisitions and dispositions, as well as a wide array of commercial agreements including sales, procurement, professional services and service contracts, promotional deals, manufacturing agreements, and nondisclosure agreements. Mr. Hyams has also represented clients with patent preparation and prosecution, patent validity and infringement analyses, and freedom to practice analyses.

Mr. Hyams’ technology expertise includes telecommunications systems, computer hardware and software, digital media and internet technologies, acoustics, consumer electronics, clean energy technology and energy management systems. In addition, as an undergraduate Mr. Hyams performed research in Pharmacology as an American Cancer Society Summer Fellow and completed advanced coursework in molecular biology and biochemistry.

Prior to joining O’Brien Jones, Mr. Hyams served as in-house counsel at Bose Corporation, AOL LLC and GridPoint, Inc.

Education

Juris Doctor, Northeastern University School of Law
Master of Arts, Asian Studies, Cornell University
Bachelor of Arts, Oberlin College

Bar Admissions

Massachusetts
Registered to practice before the U.S. Patent and Trademark Office

Professional Affiliations

American Intellectual Property Law Association

Jorge I. Negron

Registered Patent Attorney

Mr. Negron is experienced in preparing and prosecuting patent applications in a variety of technologies, including telecommunications and wireless technologies, including base stations, antennas, and mobile communication devices; solid state electronics; electronics hardware and firmware for telecommunication devices, such as cell phones and two-way radios; digital image processing; and microelectronic devices, including memory architectures and design.

Prior to joining O’BRIEN JONES, PLLC, Mr. Negron was an associate attorney at Sughrue Mion, PLLC and served as an Electrical Engineer for several years at Motorola Inc., and at the National Security Agency.

Education

Juris Doctor, Wake Forest University
Masters of Science Electrical Engineering, Johns Hopkins University
Bachelors in Electrical Engineering, University of Puerto Rico

Bar Admissions

Virginia
District of Columbia
Eastern District of Virginia
Registered to practice before the U.S. Patent and Trademark Office

Ashley N. Nicholls

Registered Patent Attorney

Ms. Nicholls has a wide range of patent experience, including the representation of both domestic and foreign clients in the areas of patent preparation and prosecution; patentability, validity, and infringement opinions; and patent litigation and appeals to the Federal Circuit.

Ms. Nicholls' experience covers a broad mix of technical fields, with an emphasis on mechanical and biomedical technologies. She has served clients in highly competitive industries, including biomedical devices, automotive, electrochemiluminescence (ECL) technologies, business management and application software, and pharmaceuticals.

Prior to joining O’BRIEN JONES, PLLC, Ms. Nicholls was an attorney with the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, DC. While there, a significant part of her practice included working with medical device companies to both procure and protect their patent rights.

Education

Juris Doctor, with honors, The University of North Carolina School of Law
Bachelor of Science and Engineering, Civil and Environmental Engineering, magna cum laude, The University of Michigan

Bar Admissions

Virginia
District of Columbia
Eastern District of Virginia
Minnesota
Registered to practice before the U.S.
Patent and Trademark Office

Professional Affiliations

American Intellectual Property Law Association
American Bar Association

Kevin D. Robb

Registered Patent Attorney

Mr. Robb has more than 10 years of experience representing clients in a wide array of intellectual property areas including domestic and international patent preparation and prosecution, patent infringement and invalidity opinions, intellectual property and software licensing, technology transfers, strategic intellectual property planning, intellectual property standards bodies issues, patent pools and antitrust issues related to patents, and copyright issues involving music licensing. Additionally, he has extensive experience managing and developing patent portfolios for Fortune 500 companies and negotiating commercial agreements involving procurement, sales and equity transactions.

Mr. Robb's technical expertise includes telecommunication technologies including network architectures, switches, routers, call processors, and enhanced service platforms; wireless technologies including network architectures, base stations, antennas, and mobile communication devices; optical systems including lasers, discrete and distributed amplifiers, switches, and network architectures; electronics hardware and firmware for digital data storage products, such as CD and DVD drives, and magnetic tape drives media; software and information systems including architectures, operating systems, and applications; Global Positioning System architectures and applications; and microelectronic devices including memory architectures and design.

Prior to joining O’BRIEN JONES, PLLC, Mr. Robb was a partner at Setter Roche, LLP and senior counsel at Sprint Nextel Corporation.

Education

Juris Doctor, University of Kansas School of Law
Masters of Science Electrical Engineering, Auburn University
Bachelors in Electrical Engineering, with high honors, Auburn University

Bar Admissions

Indiana
Kansas
Missouri
Registered to practice before the U.S.
Patent and Trademark Office