FacultyFaculty/Author Profile

Jean Burke Fordis

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Palo Alto, CA, USA


Jean Burke Fordis provides strategic intellectual property counseling to domestic and foreign clients in the pharmaceutical and biotechnology areas, particularly startup biotech companies as well as Japanese pharmaceutical companies.

Ms. Fordis’ current practice focuses on due diligence investigations, as well as the preparation of validity, infringement, and freedom-to-operate opinions regarding biotechnology and pharmaceutical patents. In addition, she advises clients in the preparation and prosecution of both domestic and foreign patent applications, and the drafting and negotiating of license agreements. She has been extensively involved in litigation and has assisted in two full district court trials, including a lengthy jury trial. Her litigation experience also includes interference matters.

A frequent guest speaker, Ms. Fordis lectures in the U.S. and Japan on the practical aspects of biotechnology and chemical U.S. patent practices, and serves as an instructor for the Patent Resources Group courses on chemical patent practice, due diligence, and opinions and for the Practising Law Institute on claim drafting and amendment writing. She presented at the 2008 CASRIP High Technology Protection
Summit as well as the 2008 Silicon Valley Association of General Counsel All Hands Meeting. In addition, Ms. Fordis has published a series of articles on U.S. patent practice in the Intellectual Rights Journal and on a variety of topics in biotechnology and licensing in other publications.

Highlights
  • Assisted a major Japanese pharmaceutical company in due diligence investigations for possible acquisitions.
  • Evaluated patent portfolios of possible competitors for a major Japanese pharmaceutical company.
  • Oversees patent portfolio of notable start-up biotech company in Silicon Valley.
  • Provides strategic counseling for the non-profit pharmaceutical company, the Institute of OneWorld Health on a pro bono basis.
  • Served as managing partner of the firm’s Palo Alto, Calif., office, member of the firm’s management committee, group leader of the firm’s biotechnology/pharmaceutical practice group, and the firm’s partner-in-charge of recruiting.
  • Clerked for the Honorable Philip Nichols, Jr., Senior Circuit Judge of the U.S. Court of Appeals for the Federal Circuit, 1985-1986.
  • Law Review, American University, 1983-1984.
  • Former biologist for the National Institutes of Health and the Uniformed Services University for the Health Sciences in the fields of pharmacology, biochemistry, and molecular biology, 1978-1982.

     
Professional Recognition
  • Phi Kappa Phi Honorary Society

Professional Activities
  • American Intellectual Property Law Association (chairman, Awards Committee,1988-1990; subcommittee chairman in Biotechnology Committee, 1991-1993)
  • BIO Intellectual Property Counsels’ Committee
  • Licensing Executive Society
  • Maryland Patent Law Association (secretary, 1990-1992; vice president, 1993-1994; president, 1995-1997)
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