Peter Paredes

Partner

About Peter Paredes

Peter Paredes works diligently with innovative executives, inventors and companies of all sizes to develop and protect their valuable assets: in their patent, trademark, copyright, and trade secret portfolios. Peter represents clients in the medical device, pharmaceutical, nutraceutical, food, biotechnology, life science, and other industries in the chemical, software, and mechanical arts.

An accomplished patent prosecutor, Peter brings broad experience and skills to his patent and trade secret law practice. As Co-Chair of the firm’s Intellectual Property practice group, Peter actively manages international patent and trade secret portfolios and works directly with clients to accomplish patent and trade secret strategies aligned with their business goals.

Peter’s understanding of IP strategy, licensing, and fundraising adds an extra dimension to counseling clients on IP procurement and execution. He identifies potential licensing opportunities and crafts strategies to avoid exposure to potential blocking patents. Peter frequently provides opinions on freedom to operate, patentability, competitive landscape analysis, due diligence, and other complex strategic IP issues.

Peter monitors competitive portfolios to remain aware of potential threats to clients’ business development plans, products, and IP portfolios. He is proactive in devising licensing, avoidance and enforcement strategies in response to potential threats. Peter assists clients by negotiating and drafting license agreements, technology transfer agreements, merger and acquisition agreements, confidentiality and consulting agreements and clinical trial agreements.

Peter serves as an Ops team member for Smart Health Catalyzer, where he mentors and helps form startups accelerating the commercialization of therapeutics, diagnostics and medical devices. Peter is an Entrepreneur-in-Residence at the Helix51 incubator for Rosalind Franklin University and a mentor for the Medical Jumpstart program for the I-Corps program, where he mentors and advises University based startups on IP issues.

Peter enjoys playing sports with his son, cooking gourmet meals for his family, and traveling.

Articles

  • USPTO issues new & revised guidance on patent eligibility under 35 USC 101. USA - December 19 2014, Lexology.
  • Teva v. Sandoz: the new standard of review in claim construction. USA - January 31 2015, Lexology.
  • FeSSIFFaSSIF dissolution: if you understand what is written above you should read this article. USA - December 8 2014, Lexology.
  • Phase III biosimilar clinical trial & infringement threat does not create justiciable case or controversy: biosimilars will require the patent dance. USA - December 15 2014, Lexology.
  • Promega v. Life Technologies: a higher enablement standard for “comprising” not within the preamble of the claim. USA - January 16 2015, Lexology.