Michelle Lecointe

About Michelle Lecointe

For all of my matters, I like to truly get to know my clients, and their businesses and technologies, and bring my many years of experience to bear to provide coordinated strategic advice and efficient results.The breadth of my experience allows me to provide clients with multiple options to fit their needs and to identify potential complications, with particular insight into the sometimes muddy issues when other legal fields overlap, such as asset sales, employment agreements, and ownership of IP rights. A substantial portion of my practice is devoted to helping clients develop strategic plans for IP protection, including determining when to file patent applications and how to adjust strategies in light of the evolution of patent examination, both in the US and internationally. I also help clients identify areas that may be more strategically protected as “know how” or trade secrets, and provide tailored advice on how to ensure that confidentiality is maintained.I have experience with host of complex legal issues, such as protecting difficult and emerging technologies and managing high-value patent portfolios. I regularly draft and negotiate a variety of IP agreements, such as complex joint venture and joint development agreements, research collaboration agreements, asset purchase agreements, and settlement agreements, as well as tailored template agreements, such as simple licenses, and confidentiality and material transfer agreements that better protect clients’ particular businesses needs and interests than off-the-shelf agreements. When clients are making substantial investments or IP purchases, I am often asked to conduct due diligence and provide valuation-oriented evaluations of the legal risks associated with a specific product, establish freedom-to-operate, and conduct patentability analyses in crowded fields.Areas of Substantial Technical Experience:Biotechnology/Pharmaceuticals/Biologics/Antibodies/ Protein Therapeutics/Small Molecule-Biologic Conjugates/ Drug FormulationsBioagricultureMedical DevicesDiagnostic Devices and AssaysLithium- and Sodium-Ion Batteries Glucose Sensors Drilling Technologies Emulation Software

Experience

1. Partner

   Seed Ip Law Group

   Jan 2023 — Present · Seattle, WA, US

   Patent Procurement and Trade Secrets:Manage large patent portfolios for platforms and product lines from initial pre-launch patent applications through life-cycle reviews to improve product and competitor coverage.Conduct invention disclosure reviews, inventor interviews, technology mining, and patentability assessments.Draft tailored patent applications to support strong patents in multiple jurisdictions.Prepare responses to US office actions and appeals and conduct examiner interviews.Coordinate patent prosecution with non-US patent counsel. Document and protect trade secrets, know-how, data, and other non-patent technical IP.Commercial and Transactional:Confer with and advise client senior management regarding strategic plans and agreements for deal values typically in the tens to hundreds of millions of dollars range.Draft and negotiate multi-national commercial agreements and documents including collaboration agreements, research and development agreements, licenses, material transfer agreements, and term sheets.Manage and monitor commercialization alliances and terminate and wrap-up agreements. Negotiate and amend or restructure existing agreements.Conduct due diligence in connection with asset purchases, investments, and royalty stream purchases.Protect client assets when agreement partners enter bankruptcy.Patent Enforcement, Validity Challenges, and Freedom-to-Operate:Manage team of junior attorneys in various US patent infringement litigations and collaborate with non-US counsel in related proceedings. Draft pleadings and motions and work with expert witnesses in patent infringement litigations through trial.Draft documents for and advise on US inter partes review and European opposition proceedings. Negotiate successful settlements in arbitration proceedings and draft related complex license agreements.Perform freedom-to-operate assessments.

Education

• Columbia Law School

  J.D.

• Harvard University

  A.B., Biochemical Sciences

Skills

• Licensing
• Corporate Law
• Biotechnology
• Legal Writing
• Litigation
• Patent Litigation
• Medical Devices
• Legal Research
• Trade Secrets
• Patent Prosecution
• Patents
• Prosecution
• Commercial Litigation
• Trademarks
• Intellectual Property
• Civil Litigation
• Legal Opinions