Troy A. Groetken - Lawyer in Chicago, IL

Troy A. Groetken, Shareholder

Email. tgroetken@mcandrews-ip.com

Tel. (312) 775-8259

Practice Areas: Global Intellectual Property Portfolio Analysis, Counseling Management, Complex Chemical, Small-molecule Pharmaceutical, and Biotechnological Patent Prosecution, Intellectual Property Acquisition, Divestiture, and Licensing, Clearance, Freedom to Operate Invalidity Opinions, Trademark Prosecution, Antitrust, Intellectual Property Landscaping

Education: Drake University, College of Pharmacy, B.S., Pharmacy, cum laude, Rho Chi, 1994Drake University Law School, J.D., cum laude, 1997John Marshall Law School, LL.M., Intellectual Property Law, with Honors, 1998

Bar Admissions: Admitted to practice in Illinois and Iowa. Member of the bars of the United States Supreme Court, Federal Circuit Court of Appeals, and District Courts for the Northern District of Illinois and the Southern District of Iowa. Registered to practice before the U.S. Patent and Trademark Office. Registration Certificate (Roll of Patent Agents), Canadian Patent Office.

Pharmaceutical Admissions: Registered, licensed pharmacist in Illinois, Iowa and Michigan.

Professional Experience: Troy Groetken is a Shareholder, Board Member, andExecutive Committee member with McAndrews. He has approximately 25 years oflegal experience in the intellectual property field and more than 25 years oftechnical experience in the pharmaceutical, biotechnological, and chemicalfields. He is recognized in the IAM Patent 1000: The Worlds Leading PatentProfessionals, and has been listed as one of the Best Lawyers in America since2012.

As a registered U.S. patent attorney, Troy regularlycounsels and is known globally as a «go-to» intellectual propertyattorney for Fortune 100 and 500 clients regarding complex intellectualproperty matters involving strategic global patent portfolio development,implementation, and enforcement. This is especially the case for mattersimpacted by recent changes caused by the AIA and ANDA/ABLA regulatory schemas.Troy also advises upon and institutes multi-level, front-end and back-endlicensing programs coordinated with a client-focused business modeling approachincluding acquisition, divestiture, platform positioning and the like. Inaddition, he strategically addresses multi-jurisdictional intellectual propertyintegration issues, ranging from core and non-core patent portfolio duediligence analysis to global portfolio coordination matters (e.g., coordinationof complex U.S. reexamination or reissue proceedings with European, Asian andAustralian appeals and opposition).

Troy focuses on a broad range of technical disciplines inthe chemical, pharmaceutical, and biotechnological arts. Areas include new drugentities (small-molecule, protein, recombinant, combinatorial technologies,assay, etc.), assays, immunoassays, biological molecular technologies, APIdevelopment and positioning, generic pharmaceuticals, biosimilars, pharmaceuticalconjugates, surfactant technologies, agricultural compositions, food-basedtechnologies, animal compositions, gellants, polyols, lubricants, coatings,elastomers, sealants, adhesives, biocides, medical devices, drug deliveryformulations, laundry and cleaning products, inorganic and organic synthesisproducts, pharmaceutical supplements, personal care and cosmetic formulations,oil and gas technologies, alternative fuels, fuel cells, and renewableenergies, among others.

He also regularly counsels Fortune 100 mechanical andelectrical companies with respect to intellectual property matters ranging fromheavy-duty industrial products (e.g., diesel engines and aircraft technologies)to small appliances.

Prior to practicing patent law, Troy worked as a clinicalconsultant pharmacist, supervised drug research programs in coordination withthe FDA, evaluated drug-management protocols, and performed drug-treatmenttrials on behalf of various hospitals and research institutions.

PUBLICATIONS SAMPLING:

Featured in HowCan Firms Avoid Falling Into GSK-Teva ?Skinny Label Trap?, GenericsBulletin, September 6, 2021.

Quoted in ArthrexRuling Leaves Attys Eyeing USPTO for Guidance, Law360, June 21, 2021.

A Conversation with Troy Groetken and OutsourcedPharma about What Happens When IP isRedistributed? CDMOs Without Borders, May 24, 2021.

Quoted in DidYou Vote To Give Your IP Away?, Outsourced Pharma, May 19, 2021.

Featured in Whyfocusing on the quantity of pharma innovation is misleading, Drug Discovery Development, February 23, 2021.

Featured in WhyBig Tech is offering Biden help with COVID-19 vaccination, PharmaceuticalProcessing World, February 17, 2021.

Threecases that changed the patent disclosure landscape of proteins, Drug Discovery Development, December 15, 2020.

TheCritical Importance of Patent Protection for Diagnostics in the COVID-19 Era,MDDI, November 19, 2020.

Rethinking the Way We Patent Diagnostics, IPWatchdog, August 13, 2020.

ThoughtLeader: Troy Groetken on Patents, www.lawyer-monthly.com, LM77-16, p. 87,October 4, 2016.

InterPartes Review, Development and Procedures, Todays General Counsel, Vol.12, No. 1, Feb/Mar 2015.

Analternative litigation strategy: ADR + IPR, Insidecounsel.com, March 26,2014.

Should theSupreme Court address claim construction in patent cases?,Insidecounsel.com, March 12, 2014.

Sufficiencyof disclosure and the great divide between the U.S. and Europe,Insidecounsel.com, February 26, 2014.

Theperfect storm that led to the rise of design patents, Insidecounsel.com,February 12, 2014.

Canpersonalized medicine survive Prometheus?, Insidecounsel.com, January 29,2014.

Is PatentReform, Round II a bad idea?, Insidecounsel.com, January 15, 2014.

REPRESENTATIVE SPEAKING ENGAGEMENTS:

Moderator, Outof Monumental Challenges Come Substantial IP Opportunities, Conseros IPVirtual Forum for Life Sciences, December 7, 2021

Moderator, TradeSecret Programs: From Setup to Enforcement, Conseros IP Virtual Forum forLife Sciences, December 5, 2021

Panel Leader, Navigating the Life Sciences IP Landscape, IPBC Connect LifeSciences Panel, September 29, 2021

Presenter, InflectionPoint: IP Innovation, Collaboration, and Enforcement at this Stage of thePandemic, Association of Medical Diagnostic Manufacturers (AMDM) QuarterlyIVD Diagnostics Sector, June 22, 2021

Moderator, Lessonsfrom COVID on Innovation, Collaboration Enforcement, BIO Digital2021, June 15, 2021

Moderator, Discussingthe Regulatory Climate in Light of the Pandemic, Conseros IP Virtual Forumfor Life Sciences, June 7, 2021

LookingBeyond the Pandemic, January 27, 2021

Event Founder/Director, Sixth Annual Symposiumon IP, Critical Updates Into The Ever-Changing Landscape of Patentability, andPatent Enforcement, McAndrews, Held Malloy, Ltd, September 29, 2016, Moderator, PracticalInsights Regarding IPR and PGR Practice

BestPractices: PGR Procedures, U.S. and Foreign Venues? 2016

Event Founder/Director, Fifth Annual Symposiumon IP, Practical Insights Into The Ever-Changing Landscape of Patentabilityand Patent Enforcement, McAndrews, Held Malloy, Ltd, June 11, 2015

StrategicU.S. Patent Portfolio Development, IP Management Seminar, ZSP PatentanwältePartG mbB, Munich, Germany, March 19, 2015

BestPractices Regardi