O'BRIEN JONES, PLLC
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Michelle E. O’Brien
Registered Patent Attorney

Ms. O’Brien has extensive 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 polymorphs.

Ms. O’Brien’s patent procurement experience involves all aspects of preparing and prosecuting U.S. and foreign patent applications, including prosecuting reexamination and reissue applications and conducting oral hearings before the Board of Patent Appeals and Interferences. Her litigation experience has been in the area of Hatch-Waxman litigation involving Abbreviated New Drug Applications.

Ms. O’Brien’s practice includes creating and maintaining clients' patent portfolios and analyzing competitors' patent portfolios. Ms. O’Brien provides prelitigation intellectual property counseling to clients in order to maximize the value of clients' patent portfolios and to 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 patent preparation and prosecution, as well as conducting due diligence investigations on both U.S. and international patent portfolios, with an emphasis on pharmaceuticals.

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

Education

  • Juris Doctor, Georgetown University Law Center
  • Bachelor of Art, 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

Erin C. DeCarlo
Registered Patent Attorney

Ms. DeCarlo focuses her practice on U.S. and foreign patent procurement and client counseling, guided by a technical expertise in chemical, biochemical, and pharmaceutical technologies.

Ms. DeCarlo is experienced in all aspects of patent procurement, from drafting and filing new applications to interference practice to securing patent rights through the appellate process.

 

Prior to joining O’Brien Jones, PLLC, Ms. DeCarlo was an attorney in the Atlanta office of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, where she was involved in due diligence investigations; pre-litigation and freedom to operate analyses; preparing patentability, validity, and non-infringement opinions; and all stages of patent procurement before the U.S. Patent and Trademark Office.

Prior to attending law school, Ms. DeCarlo worked as a neurobiology research assistant at Harvard Medical School and Boston Children’s Hospital. While there, she gained significant scientific experience studying neurotransmitter receptor binding and its role in Sudden Infant Death Syndrome.

Education

  • Juris Doctor, magna cum laude, Duke University School of Law
  • Bachelor of Art, cum laude, Biochemistry and Spanish, Bowdoin College

Bar Admissions

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

Professional Affiliations

  • American Intellectual Property Law Association
  • American Bar Association, Intellectual Property Section
  • Georgia Bar Association, Intellectual Property Section
  • American Chemical Society

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
Brian L. Mutschler
Registered Patent Attorney

Mr. Mutschler has experience in both the examination and procurement of patents in a wide variety of technical fields, with an emphasis on chemical, pharmaceutical, and semiconductor technologies.

Mr. Mutschler’s experience includes all aspects of patent procurement, from drafting and filing new U.S. and foreign patent applications through appeals to the Board of Patent Appeals and Interferences.

Prior to joining O’Brien Jones, PLLC, Mr. Mutschler was a student associate at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, DC, where he prepared and prosecuted U.S. and foreign patent applications. In addition, Mr. Mutschler performed freedom to operate analyses and prepared patentability opinions.Mr. Mutschler also served as a Patent Examiner in the U.S. Patent and Trademark Office.

As a Patent Examiner, Mr. Mutschler examined patent applications crossing over chemical, electrical, and mechanical disciplines, giving him a diverse range of experience in various technologies. In particular, Mr. Mutschler reviewed patent applications in the plastic molding, semiconductor, and photovoltaic industries.

Additionally, Mr. Mutschler was responsible for examining patent applications relating to various electrochemical and electrophoretic processes and apparatuses.Mr. Mutschler’s graduate research focused on the structural and biophysical chemistry of nucleic acids. His major research projects studied ribozyme structures and self-replication of DNA-like polymers.

Education

  • Juris Doctor, cum laude, George Mason University School of Law
  • Masters of Science, Chemistry, Georgia Institute of Technology
  • Bachelor of Chemical Engineering, summa cum laude, Georgia Institute of Technology

Professional Affiliations

  • American Intellectual Property Law Association
  • American Bar Association, Section on Intellectual Property
  • Federal Circuit Bar Association

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

 

Professional Affiliations

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

Bar Admissions

  • American Intellectual Property Law Association
  • American Bar Association
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