Todd Holmbo
Cold Spring,USA
Summary
Results-driven Principal Intellectual Property Attorney with a successful history at PHILIPS, achieving a 30% increase in IP portfolio value within two years. Specializes in IP mediation and counseling, with a strong ability to devise strategies for patent challenges and manage intricate litigations. Leverages analytical skills and outstanding communication to protect and optimize intellectual assets. Committed to advancing innovative solutions in intellectual property management.
Overview
34
34
years of professional experience
1
1
Certification
Work History
Principal Intellectual Property Attorney
HOLMBO IP LLC
Cold Spring, NY
05.2016 - Current
- Counseling clients regarding U.S
- Patent, trademark, copyright, trade secret, and domain name issues
- Drafting and negotiating technology license, material transfer, and disclosure and confidentiality agreements
- Preparing and prosecuting U.S
- And foreign pharmaceutical, biotechnology, medical device bioinformatics, software, and digital security patent and trademark applications
- Developing strategy and managing comprehensive IP portfolios for clients
Senior Intellectual Property Counsel
PHILIPS
Briarcliff Manor, NY
08.2007 - 05.2016
- Increased IP portfolio value by thirty percent in two years
- Managed all aspects of major patent litigations
- Developed and coordinated intellectual property strategy, managed patent and trademark portfolios, and counseled business units concerning an array of intellectual property issues, including copyright and trade secret matters
- Evaluated invention disclosures, and prosecuted U.S
- And foreign biotechnology, bioinformatics, and medical device patent applications
- Prepared and presented opinion letters, material transfer, and confidentiality agreements
- Drafted and negotiated intellectual property license and settlement agreements
- Optimized periodic intellectual property audit process
- Led benchmarking and whitespace analysis teams
- Counseled business units concerning acquisition strategy and handled all aspects of transactional matters
- Administered Philips IP Academy and lectured foreign students concerning all aspects of intellectual property law
- Served as company IP export control compliance officer
Senior Patent Associate
THELEN REID BROWN RAYSMAN & STEINER, LLP
Florham Park, NJ
07.2003 - 08.2007
- Prepared and prosecuted more than 30 U.S
- And foreign biotechnology, medical device and pharmaceutical patent applications
- Managed all aspects of patent litigation
- Developed patent strategy, managed patent portfolios, and counseled clients concerning a wide range of intellectual property issues
- Prepared non-infringement and freedom to operate opinions
- Drafted and negotiated intellectual property license and settlement agreements
- Conducted intellectual property audits and transactional due diligence
IP Litigation Associate
KAYE SCHOLER, LLP
New York, NY
06.1999 - 07.2003
- Researched and wrote motions and memoranda of law on a variety of procedural and biotechnology and pharmaceutical patent issues
- Conducted and defended depositions
- Supervised discovery and drafted discovery documents
- Prepared and prosecuted U.S
- And foreign pharmaceutical, medical device, and mechanical patent applications
- Coordinated trial preparation
- Drafted opinion letters, settlement and licensing agreements
- Performed intellectual property due diligence
IP Associate
SIDLEY & AUSTIN
New York, NY
06.1998 - 06.1999
- Researched and wrote motions and memoranda of law on a variety of intellectual property issues
- Drafted discovery documents and conducted depositions
- Prepared and prosecuted U.S
- And foreign patent applications
- Managed medical device and pharmaceutical trial preparation
- Drafted opinion letters, licensing and settlement agreements
- Performed intellectual property due diligence
Associate
COOPER & DUNHAM LLP
New York, NY
05.1995 - 06.1998
- Prepared and prosecuted U.S
- And foreign biotechnology and pharmaceutical patent applications
- Drafted inventor affidavits
- Researched and wrote memoranda of law on a variety of patent, trademark and copyright issues
- Researched, coordinated and wrote responses for European patent opposition proceedings
- Provided litigation support
Summer Intern
CARROLL COUNTY DISTRICT ATTORNEY
Mt. Carroll, Illinois
05.1994 - 08.1994
- Researched and prepared memoranda of law on a variety of criminal law issues
- Assisted in trial preparation
- Drafted affidavits and procedural documents
Substitute Teacher
JO DAVIESS/ CARROLL COUNTY SCHOOLS
Galena and Mt. Carroll, Illinois
01.1991 - 05.1993
- Prepared lesson plans and taught high school chemistry, physics, biology, trigonometry and pre-calculus classes
- Prepared lesson plans and taught middle-school science, math and English classes
Education
J.D. -
NEW YORK UNIVERSITY SCHOOL OF LAW
New York, NY05.1996
B.S. - Biology, (Molecular and Cell Biology) and Psychology (Neuroscience)
UNIVERSITY OF ILLINOIS
Urbana-Champaign, IL12-1990
Skills
- Counterfeit goods enforcement
- IP mediation
- Intellectual Property Dispute Resolution
- Trademark cancellations
- Intellectual Property Counseling
- Patent Challenge Strategies
Certification
Environmental Technician, 2024, Natural Resources Training Group
Communityleadership
- Raised and distributed more than $300,000 to Haldane Central Schools as part of The Haldane School Foundation.
- Led and managed $700,000 renovation fundraising effort as church counsel officer for Dobbs Ferry Lutheran Church, Dobbs Ferry, New York.
- Head basketball coach for Cold Spring, New York Catholic Youth Organization for six years.
- Basketball coach for Cold Spring Recreational League for six years.
- USA Football certified assistant coach for Philipstown Hawks Youth Football League for five years.
- Helped raise $50,000 for Haldane High School athletic renovations.
- Serve as Putnam County Election Inspector.
Admissionsassociations
- United States Supreme Court
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court, Southern District of New York
- New York State
- U.S. Patent and Trademark Office Registered Attorney
- Intellectual Property Owners Association, Trade Secrets Committee
- American Intellectual Property Law Association
- New Jersey Technology Council
- Association of the Bar of the City of New York, Committee on Science and the Law
Timeline
Principal Intellectual Property Attorney
HOLMBO IP LLC
05.2016 - Current
Senior Intellectual Property Counsel
PHILIPS
08.2007 - 05.2016
Senior Patent Associate
THELEN REID BROWN RAYSMAN & STEINER, LLP
07.2003 - 08.2007
IP Litigation Associate
KAYE SCHOLER, LLP
06.1999 - 07.2003
IP Associate
SIDLEY & AUSTIN
06.1998 - 06.1999
Associate
COOPER & DUNHAM LLP
05.1995 - 06.1998
Summer Intern
CARROLL COUNTY DISTRICT ATTORNEY
05.1994 - 08.1994
Substitute Teacher
JO DAVIESS/ CARROLL COUNTY SCHOOLS
01.1991 - 05.1993
Environmental Technician, 2024, Natural Resources Training Group
J.D. -
NEW YORK UNIVERSITY SCHOOL OF LAW
B.S. - Biology, (Molecular and Cell Biology) and Psychology (Neuroscience)
UNIVERSITY OF ILLINOIS
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