Joseph G. Contrera

Counsel

Mr. Contrera's experience includes over thirteen years in intellectual property law, with the last ten years spent in private practice and focuses on patent prosecution, litigation, U.S. Food & Drug Administration administrative and regulatory matters, as well as technology transfer and licensing. From 1995 to 1998, he was a Technology Licensing Specialist at the National Institutes of Health. At NIH, he negotiated licensing and technology transfer deals with the private sector and academia, on behalf of both NIH and FDA, for which he received the NIH Award of Merit in 1998. From 1989-1995, Mr. Contrera was a Biologist at the U.S. Food & Drug Administration, where he received a Group Recognition Award in 1997. In addition to patent matters, he presently advises clients on compliance with federal, NIH, and FDA regulations, including the emerging area of generic biologics, and counsels clients on the valuation of their intellectual property portfolios with respect to patent and FDA issues. He has given presentations on technology transfer at national meetings and is an author on numerous scientific and legal publications.

Professional Affiliations

• American Bar Association
• IP Section Council Member-at-Large for Maryland State Bar Association
• American Intellectual Property Law Association (AIPLA)
• Maryland State Bar Association
• DC Bar Association
• Association of University Technology Managers (AUTM)
• American Chemical Society
• Licensing Executives Society (LES)
• Intellectual Property Owners Association (IPO)

Articles and Publications

• Contrera, J.G., and Lew, B.L., Patents and Property, A Primer On Legal Rights For Start-Up Companies, 6 Modern Drug Discovery, 52 (May, 2003).
• Contrera, J.G., Intellectual Property Problems Facing Start-Ups, 1 BioProcess International, 22 (2003).
• Contrera, J.G., and Lew, B.L., Licensing Agreements and Small Entity Status, Journal of the Association of University Technology Managers 14, 7-16 (2002).

Honors

• Elected IP Section Council Member-at-Large for Maryland State Bar Association (Founding Member)
• Received NIH Award of Merit for licensing activities in 1998
• FDA Group Recognition Award in 1996

Representative Matters

• Stone Construction Equipment, Inc. v. Masonry Equipment Distributors, Inc. (6:07-cv-264-Orl 22JGG M.D. FL) (Represented Plaintiff manufacturer against Defendant importing infringing construction equipment, won permanent injunction against Defendant)
• Liebherr-Werk Ehingen GMBH v. Terex-Demag GMBH & Co. KG (3:2004cv00204 D.C. CT) (represented Plaintiff in patent infringement matter over crawler crane technology)
• Chiron Corp., v Agouron Pharmaceuticals, Inc. (C 98-2995 CW N.D. CA) (represented Defendants in patent infringement matter over Hepatitis C vaccine technology)

Speaking Engagements and Presentations

• Panelist: “IP Challenges Facing Start-Ups,” Maryland State Bar Association JOINT BENCH/BAR CONFERENCE, June 13-16, 2007, Ocean City, MD.
• Panelist/Moderator: “Madey v. Duke II: What Protection Does Your Institution Have From Patent Infringement Under Bayh-Dole?” Association of University Technology Managers (AUTM) Eastern Regional Meeting, June 4-6, 2007, Washington, DC.
• Moderator: “License it or Use it,” Workshop on Start-Ups, Association of University Technology Managers (AUTM) Annual Meeting in Orlando, FL (February 2006).
• “Understanding the Impact of Merck v. Integra,” Lecture for DC Bar (September 7, 2005).
• "Is it safe for my institution to conduct research after Madey v. Duke and Integra v. Merck?" Paper for presentation at the 230th ACS National Meeting, in Washington, DC, Aug 28, 2005.
• “Things I Wish I Knew While I was at OTT That I Only Learned After I Left: Changes in Licensing Since 1995,” Presentation Before NIH Office of Technology Transfer, May 31, 2005.
• Moderator: “Is it Safe for My Institution to Perform Research?” Association of University Technology Managers (AUTM) Annual Meeting in Phoenix, AZ (February, 2005).
• Panel Co-Chair: “Are Recent U.S. Decisions Driving Biomedical Research to Distraction or Out of Town?” Licensing Executives Society, Annual Meeting in Boston, (October 2004).
• Panelist: “The Role of Intermediaries on Government/University Licensing Programs,” Licensing Executives Society, Spring Meeting in New York, (May 14 2004).

Bar Admissions and Registrations

• District of Columbia, 1996
• Registered to practice before the U.S. Patent and Trademark Office, 1999
• Maryland, 1996

Courts

• U.S. District Court for the Middle District of Florida
• U.S. District Court for the Northern District of California
• U. S. District Court for the District of Connecticut
• U.S. District Court for the Eastern District of Michigan

View All Attorneys

Related Press Releases

Related Newsletters