Geoff Karny helps clients solve problems, seize opportunities, and create value. He brings 25 years of unique
experience to meeting the specialized needs of life science and technology companies. His cross-disciplinary experience in
intellectual property, transactional, and regulatory law facilitates issue identification, problem solving, and value creation.
His combination of law firm and in-house experience results in business-oriented solutions to legal problems.
Geoff’s
practice focuses on intellectual property, particularly patent law. He has been responsible for developing and implementing
corporate IP strategies, starting corporate patent departments, building patent and trademark portfolios, negotiating and
preparing technology transaction agreements, and conducting IP due diligence in corporate transactions. In recognition of
his extensive experience with licensing and other technology transactions, he has received the Certified Licensing Professional
designation from the Licensing Executives Society. In addition, Geoff has rendered patentability, freedom-to-operate, non-infringement,
and invalidity opinions, and he has guided patent interference and opposition proceedings. Geoff has worked in virtually all
technical areas of biotechnology.
In addition to his 14 years of experience with major law firms, Geoff managed
the patent departments of two biotech companies, Gene Logic Inc. and Genetic Therapy Inc., and he was a senior patent counsel
for Novartis Pharmaceuticals Corp. He was heavily involved in a wide range of IP transactions. This experience has made him
especially attuned to the business needs of companies and the challenges faced by in-house counsel.
Geoff gained
substantial experience with software patents and licensing while at Gene Logic. He has continued to practice in these
areas.
Geoff also has substantial experience in relevant regulatory law. After joining his first law firm, he practiced
FDA and export control law as well as patent law. Geoff started his legal career at the Securities and Exchange Commission.
His experience with the disclosure requirements for securities offering documents provides special insights in conducting
IP due diligence for venture capitalists and underwriters.
Geoff has testified at four Congressional hearings and
has been the principal or contributing author of eight reports on biotechnology. He has written numerous articles on patenting,
licensing, and regulating technology and has made more than 50 presentations on these topics to industry, scientific, legal,
and government audiences.
Areas of Expertise
* Intellectual Property
* Licensing
* Life Sciences
* Biotechnology
* Bioinformatics
* Software
Education
* Cornell University, B.A. in Chemistry
* New York University School of Law, J.D
Bar Admissions
* Virginia
* District of Columbia
* U.S. Patent and Trademark Office
Honors and
Certifications
* Licensing Executives Society, Certified Licensing Professional, 2008
* Washington, D.C. Super Lawyers, 2007 and 2008
* Virginia Super Lawyers, 2006
Professional
Associations
* American Intellectual Property Law Association
* Intellectual
Property Owners Association
* Licensing Executives Society
* Biotechnology
Law Report, Editorial Board
* Tech Council of Maryland
* American Bar Association
Recent Publications and Presentations
* “Creating Value with Intellectual Property,”
Montgomery County, Maryland Incubator Luncheon, October 30, 2008
* "Patent Licensing After MedImmune"
and "Patent Injunctions after eBay," 2007 Mid-Atlantic Bio Conference, Bethesda, MD, October 25, 2007
* "Business Strategies for Molecular Diagnostics in the Lab," Contributor, Washington G-2 Reports, 2007
* "Opinions of Counsel for Pharma and Biotech Patents," ACI Pharma/Biotech Patent Boot Camp, San Francisco, CA,
September 18, 2007
* "Diagnostic Testing – What Is Patentable," ACI 8th Advanced Forum
on Biotech Patents, Menlo Park, CA, April 19, 2007
* "In Defense of Gene Patenting," Genetic
Engineering & Biotechnology News, p. 6, April 1, 2007
* "Due Diligence in Technology Licensing,"
Presentation to NIH Office of Technology Transfer, Rockville, MD, March 20, 2007
* "Patents on
Molecular Diagnostics," G-2 Reports Second Annual Molecular Diagnostics Conference, Tampa, FL, February 8, 2007
* "Using Intellectual Property to Create Value," Biotech Management Institute Annual Meeting, Rockville, MD, February
17, 2006
* "How to Set a Patent Strategy," Legal Times, p. 40, June 20, 2005
* "Using Intellectual Property to Create Value," Biotech Management Institute Luncheon, Rockville, MD, October 17,
2004
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