Summary
Overview
Work History
Education
Skills
Publications
Bar Admissions
Research
Timeline
Generic

Gregory C. Houghton

Aiken,SC

Summary

Strategic IP Director known for high productivity and efficient task completion. Specialize in operational strategy, team leadership, and financial oversight with project teams. Excel in communication, problem-solving, and adaptability, ensuring effective team collaboration and project success.

Overview

25
25
years of professional experience

Work History

Director, Intellectual Property

PTC Therapeutics
Warren, NJ
01.2022 - Current
  • Partner with Leadership Teams and lead the development and implementation of optimal strategies to protect IP assets.
  • Lead the Development and implementation of global Patent and Trademark strategies and processes.
  • Lead high performance teams that include patents, research, and business partners to implement patent strategies, minimize risks and maximize protection for development products in Research and Development and commercial product.
  • Draft and prosecute small molecule patent applications on a global level.
  • Lead in the formulation of Patent and Regulatory exclusivities for development and commercial projects and providing recommendations concerning loss of exclusivity (LoE) for projects and business forecasting.
  • Lead in the examination of patents, file histories prior art, ongoing litigation, and citizen’s petitions to develop strategies for the development of 505(b)(1) and 505(b)(2) product applications and/or potential product applications.
  • Assisting in assessing guiding formulation development in view of patents and potential future strategic litigation (Hatch-Waxman inclusive).
  • Lead patentability and freedom to operate activities and secure freedom from blocking third party patent rights.
  • Lead in drafting and negotiating transactional licensing agreements and IP agreements on a global level such as Material Transfer agreements (MTAs), Investigator Initiated Research Agreements (IIRAs), confidential agreements, service agreements, Co-development agreements and Freedom-to-Operate licensing agreements.
  • Lead the Development of interactive patent and regulatory educational program for researchers, regulatory and business development teams to help them gain both a greater understanding and appreciation of patent and regulatory exclusivities.
  • Partner with business to support NDA filings and manage and maintain accountability for Orange Book listings.
  • Support business partners in generic ANDA and other IP litigation issues.
  • Effectively manage outside counsel to reduce spending and maximize results.
  • Effectively manage IP budgets to optimize use of resources and meet internal cost targets.
  • Maintain full accountability of intellectual property to Research and Development as well as business development and licensing groups.

Senior Patent Counsel

Novartis Pharmaceuticals
East Hanover, NJ
06.2010 - 12.2020
  • Company Overview: Corporate Intellectual Property
  • Partner with Leadership Teams to develop, implement and communicate optimal strategies to protect IP assets (patents, trademarks and copyrights).
  • Develop and implement global Patent and Trademark strategies and processes.
  • Manage, direct and develop associates on IP matters and communications skills supporting both Research and Development and branded products on a global level.
  • Effectively lead high performance teams that include patents, research and business to implement patent strategies, minimize risks and maximize protection for development products in Research and Development and commercial products.
  • Manage, direct and leverage specific designated patent activities for multiple commercial products within Cardiovascular and metabolic diseases, Oncology, Autoimmune and Respiratory research areas on a global level.
  • Conduct due diligence responsibilities that include the evaluation of patent portfolios of third parties and recommendations to business regarding acquisition or licensing opportunities. Therapeutic areas of due diligence activity included Cardiovascular and metabolic diseases, Oncology, Neuroscience and Respiratory.
  • Assist in formulation of patent strategies and Regulatory exclusivities for development and commercial projects and providing recommendations concerning loss of exclusivity (LoE) for projects and business forecasting.
  • Lead patentability and freedom to operate activities and secure freedom from blocking third party patent rights.
  • Lead in drafting and negotiating transactional licensing agreements and IP agreements on a global level such as Material Transfer agreements (MTAs), Investigator Initiated Research Agreements (IIRAs), confidential agreements, service agreements, Co-development agreements and Freedom-to-Operate agreements.
  • Effectively manage outside counsel to reduce spending and maximize results.
  • Effectively manage IP budgets to optimize use of resources and meet internal cost targets.
  • Maintain full accountability of intellectual property to Research and Development as well as business development and licensing groups.
  • Draft and prosecute small molecule patent applications on a global level.
  • Partner with business to support NDA filings and manage and maintain accountability for Orange Book listings.
  • Support business partners in generic ANDA and other IP litigation issues.
  • Formulate publication strategies to minimize risks to patenting.
  • Corporate Intellectual Property

Senior Patent Counsel

Ikaria
Clinton, NJ
01.2010 - 06.2010
  • Manage, direct, and leverage all intellectual property including Patents, Trademarks and Copyrights.
  • Manage, direct, and leverage specific designated patents (including related intellectual property (IP)) activities for the company. Including working with research and engineering teams.
  • Lead the development of IP for the medical device INOMAX (nitric oxide) gas, for inhalation.
  • Conduct due diligence responsibilities that included the evaluation of patent portfolios of third parties.
  • Direct the formulation of patent strategies in development projects and providing patent situations. Patent situations include 'Freedom-to-operate' and interference proceedings.
  • Secure freedom from blocking third party patent rights.
  • Maintain full accountability of intellectual property to Research and Development as well as business development and licensing groups.
  • Support company in generic ANDA litigation issues.
  • Develop interactive patent educational program for researchers to help them gain both a greater understanding and appreciation of the patent process.

Patent Attorney

Novartis Pharmaceuticals
East Hanover, NJ
06.2004 - 01.2010
  • Company Overview: Corporate Intellectual Property
  • Manage, direct, and leverage specific designated patent (including related intellectual property (IP)) activities within Oncology, Respiratory/Dermatology and Neuroscience research areas on a global level.
  • Draft and prosecute small molecule patent applications complemented by over 8 years of research experience.
  • Conduct due diligence responsibilities that include the evaluation of patent portfolios of third parties and recommendations to business regarding acquisition or licensing opportunities. Therapeutic areas of due diligence activity included Oncology, Respiratory and Neuroscience.
  • Assist in formulation of patent strategies in development projects and providing patent situations. Patent situations include 'Freedom-to-operate' and interference proceedings.
  • Secure freedom from blocking third party patent rights.
  • Maintain full accountability of intellectual property to Research and Development as well as business development and licensing groups.
  • Support company in generic ANDA litigation issues.
  • Develop interactive patent educational program ('The Patent Puzzle') for researchers to help them gain both a greater understanding and appreciation of the patent process.
  • Corporate Intellectual Property

Patent Attorney

Mathews, Collins, Shepherd & McKay. P.A.
Princeton, NJ
11.2002 - 06.2004
  • Prepared and prosecuted chemical compound patent applications, mechanical patent applications, and chemical engineering patent applications, both for large and small entity clients. Prosecution work included small chemical compound, chemical engineering, mechanical devices, and design and plant patent applications.
  • Researched and drafted 'Freedom to operate' opinion letters for generic pharmaceutical companies and advised foreign and domestic clients as to the patentability of inventions.
  • Researched and drafted opinion letters for the registration and use of Trademarks.
  • Prosecuted patent interference cases with Bruce Collins (author of 'Current Patent Interference Practice', Prentice Hall (1987)).
  • Supported litigation.

Patent Agent

Bristol Myers Squibb (Formerly DuPont Pharmaceuticals)
Wilmington, DE
01.2001 - 11.2002
  • Prepared and prosecuted chemical compound patent applications. Prepared several applications in the pharmaceutical therapeutic areas including cardiovascular, inflammation, central nervous system, and virology.
  • Communicated with inventors as to the scope of patent applications while communicating with foreign agents with regard to the prosecution of patent applications before foreign Patent Offices.

Patent Liaison

DuPont Pharmaceuticals
Wilmington, DE
08.2000 - 01.2001
  • Assisted in prosecuting Office Actions within the inflammatory disease area. Also, maintained part-time experience as a researcher within research division.

Education

J.D. -

WIDENER UNIVERSITY SCHOOL OF LAW
05.2002

B.S. - Chemistry

PENNSYLVANIA STATE UNIVERSITY
12.1992

Skills

  • Global IP Strategies Cross-Functional Global Teams Domestic and International Patent Prosecution Patent Law Management of Outside Counsel Freedom-to-Operate and Clearance Infringement Analyses Validity/Invalidity Analyses Risk Evaluation and Mitigation Strategies Client/Customer Relationship Management Active Listening Persuasive Writing Collaboration FDA ANDA litigation support and Communication

Publications

  • Batt, D., Houghton, G., Polyfunctional pyridines from nitroacetamide and β-diketones. A useful synthesis of substituted imidazo [4,5−β] pyridines and related compounds., J. Heterocyclic Chem., 1995, 32, 963
  • Tierney, J., Houghton, G., Mascavage, L., McCoy, M., Findeisen, A., Kilburn, J., Effects and Conformational Analysis of Some Substituted 2,3-Diphenyl-1,3-thiazolidin-4-ones., Magnetic Resonance in Chemistry, 1996, 34, 573-576
  • DeRosa, M., Houghton, G., Issac, R., First preparation of 2-Aminopyrrole and simple 1-substituted-2-Aminopyrroles., Tetrahedron Letters, 1995, 36, 51, 9261-9264
  • Pinto, D., Batt, D., Pitts, W., Petraitis, J., Orwat, M., Wang, S., Houghton, G., Jetter, J., Sherk, S., Copeland, R., Covington, M., Traskos, J., Magolda, R., Terphenyl Cyclooxygenase-2-(COX2) Inhibitors: o-Biphenyl analogs and the optimization of the central ring., Biorganic and Medicinal Chemistry Letters, 1999, 9, 919-924
  • Olson, R., Sielecki, T., Wityak, J., Pinto, D., Batt, D., Houghton, G., Frietze, W., Liu, J., Tobin, A., Orwat, M., DiMeo, S., Lalka, G., Mousa, S., Racanelli, A., Hausner, E., Kapil, R., Rabel, S., Thoolen, M., Reilly, T., Anderson, P., Wexler, R., Orally Active Isoxazoline Glycoprotein IIb/IIIa Antagonists with Extended Duration of Action., J. Med. Chem., 1999, 42, 1178-1192
  • Batt, D., Houghton, G., Daneker, W., Jadhav, P., Synthesis of Cis and Trans Isomers of an Isoxazoline Ring-Hydroxylated Metabolite of Roxifiban, a Platelet Glycoprotein IIb/IIIa Receptor Antagonist., J. Org. Chem., 2000, 65, 8100-8104
  • Pinto, D., Batt, D., Pitts, W., Petraitis, J., Orwat, M., Wang, S., Houghton, G., Jetter, J., Sherk, S., Copeland, R., Covington, M., Traskos, J., Magolda, R., Terphenyl Cyclooxygenase-2-(COX2) Inhibitors: 4’-Methylsulfonylphenyl-2-substituted Benzene Derivatives., Manuscript in preparation
  • Batt, D., Petraitis, J., Houghton, G., Modi, D., Corjay, M., Mousa, S., Wexler, R., Jadhav, P., Disubstituted Indazoles as Potent Antagonists of the Integrin αvβ3., J. Med. Chem., 2000, 43, 41-58

Bar Admissions

  • Admission to practice before the state of Pennsylvania
  • The state of New Jersey
  • The Federal District Court of New Jersey
  • The U.S. Patent and Trademark Office

Research

Staff Scientist, Bristol Myers Squibb (Formerly DuPont Pharmaceuticals), Wilmington, DE, 19880, 01/01/93, 12/31/01, Worked within the therapeutic areas of cardiovascular and inflammation. Worked independently in completing high profile research projects. Prepared and purified potential targets for drug candidacy within research programs. Organized and prepared monthly presentations highlighting research accomplishments. Utilized databases to research alternative synthetic methods and available starting materials. Organized research data for publications and patents.

Timeline

Director, Intellectual Property

PTC Therapeutics
01.2022 - Current

Senior Patent Counsel

Novartis Pharmaceuticals
06.2010 - 12.2020

Senior Patent Counsel

Ikaria
01.2010 - 06.2010

Patent Attorney

Novartis Pharmaceuticals
06.2004 - 01.2010

Patent Attorney

Mathews, Collins, Shepherd & McKay. P.A.
11.2002 - 06.2004

Patent Agent

Bristol Myers Squibb (Formerly DuPont Pharmaceuticals)
01.2001 - 11.2002

Patent Liaison

DuPont Pharmaceuticals
08.2000 - 01.2001

J.D. -

WIDENER UNIVERSITY SCHOOL OF LAW

B.S. - Chemistry

PENNSYLVANIA STATE UNIVERSITY
Gregory C. Houghton
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