I am an experienced US-trained registered Patent & Trademark Attorney and the Founder of INSPIRE PATENTS, PLLC, an Intellectual Property firm in Seattle. Please visit www.inspirepatents to learn more about us, and how we can help you in a very transparent/ affordable way.
I have been practicing patent law since 2002, which includes practicing with two of the best IP firms in Northern Virginia, only blocks from the USPTO. This provided the opportunity to meet daily with Examiners to gain insights into their decision-making process to obtain allowances of patent applications for my national & international clients.
It's best to get it right the first time. Working with a competent counsel will save precious time, avoid paying unnecessary expenses, and provide a peace of mind. The best advice to any client - hire the best attorney you can afford.
Our mission is to provide "creative, exceptional, and personalized legal solutions" to each client regardless of size. I have successfully represented hundreds of cases on behalf of independent inventors, start-ups, universities, mid-size companies, Fortune 100 and 500 companies, including Agilent, Amgen, Tyco Healthcare, Altria, and L'Oreal.
You can find my professional profile on LinkedIn under Loree J. Kim, Ph.D., J.D., which includes 8 recommendations from professional patent attorney colleagues and clients.
My firm provides strategic IP counseling tailored to the particular business interests and goals of each client to ensure that our clients obtain broad and enforceable intellectual property rights in the US and globally by working very closely with competent foreign counsels. A viable business strategy must include an international filing strategy.
I specialize in drafting high quality utility patent applications in these fields - biotech, chemistry, medical devices, consumer products, mechanical devices, nanotechnology, and business methods.
Specialized Skills include:
Trademark Filings and Prosecution
Preparation of various commercial contracts
Freedom-to-Operate Searches and Opinions
IP Due Diligence
Patent Landscape Maps
Supreme Court of Washington State
License to Practice Law in Washington State
United States Patent & Trademark Office
US Patent & Trademark Office Registered Agent
University of Washington School of Law
2000 - 2003
University of Colorado, Dept. of Chemistry & Bioch
PhD Chemistry & Biochemistry
1994 - 2000
University of Delaware
Biological Sciences & Chemistry
1984 - 1988
CeloNova BioSciences, Inc.
Chief Intellectual Property Officer
2008 - 2011
EXECUTIVE MANAGEMENT EXPERIENCE - Participated as Vice President in Executive Meetings to obtain broad perspective on business operations; Contributed in making corporate decisions; Counseled CEO and business development/marketing executives on a broad range of intellectual property matters to facilitate business objectives in endovascular and interventional radiology industries.
AGREEMENTS - Negotiated and drafted various agreements, including: asset transfer agreements, licensing agreements, joint-development agreements, vendor agreements, supply and distribution agreements, manufacturing agreements, group purchasing agreements, consulting agreements, service contract agreements, research agreements, clinical research agreements, non-disclosure agreements, material transfer agreements, employment agreements, non-compete agreements, lease agreements.
GLOBAL PATENT PORTFOLIO - Major responsibility for defining the direction and scope of patent development; Successful results in getting very challenging US cases allowed (3 US cases during this term, in total, almost 45 globally); Strategically managed an extensive global patent portfolio relating to proprietary polymers and medical devices, including stents, balloons, catheters, stent grafts, synthetic vessels, dental implants, orthopedic devices, surgical fasteners, wound dressings, artificial heart valves, nitinol-based devices, drug delivery devices, and embolic acrylic-based hydrogels.
PORTFOLIO EVALUATION - Conducted patent audit; Rendered validity opinions relating to client portfolio to assess strength/weakness; Conducted patent searches, rendered patentability opinions, and developed patent landscape maps.
ACTIVE PROSECUTION - Hands-on drafting of original utility and PCT applications based on invention disclosures; Active preparation/prosecution of responses/amendments for US and international applications; Corresponded directly with Foreign Associates to provide explicit instructions including proposed claim amendments and arguments; Reviewed work product of outside counsels and edited as necessary; Designed experiments with scientists to overcome obviousness rejections.
IP DUE DILIGENCE - Third-party IP for technology acquisitions (12), licensing opportunities (4), and merger transactions (2).
FREEDOM-TO-OPERATE Analyzed search results to clear products in development (3) and third-party technology for acquisitions (5); Provided analysis/recommendations for design-around options.
ADMINISTRATIVE MANAGEMENT - Overhauled entire patent portfolio establishing an electronic database and administrative system; Successfully drafted and implemented internal IP Manual and IT/IP policies; Established procedures for the protection of trade secrets.
COMPLIANCE/REGULATIONS - Reviewed and edited instructions-for-use documentations, website content, and marketing materials for compliance; Reviewed documentation for FDA submissions.
TRADEMARKS - Managed extensive global trademark portfolio.
Buchanan Ingersoll & Rooney PC
2006 - 2011
DRAFTING UTILITY APPLICATIONS - Reviewed disclosures; conducted inventor interviews; Drafted utility applications and/or prosecuted various subject matter, including: transgenic tobacco plants, vaccines, antibodies, pharmaceuticals, cosmetics, controlled-release nanocapsules, diagnostic assays, inhalation devices, drug delivery devices/patches, cardiovascular stents, polymer-based consumer products, pharmaceutical patches, filtration devices, fiber optics, and various mechanical devices.
BROAD PROSECUTION EXPERIENCE - National and PCT applications; Filed responses to preliminary amendments, election of species/restriction requirements, office actions; Conducted examiner interviews via teleconference and personal interviews; Reviewed files after allowance; Prepared sequence listings and informal drawings; Filed R.C.E.s, divisionals, continuation-in-part applications, and conversions of provisional applications.
OPINIONS - Rendered patentability, freedom-to-operate, validity, and infringement opinions; Provided analysis for design around options.
CLIENT COUNSELING - Portfolio management for domestic and foreign clients, including providing instructions and proposed claim amendment to foreign associates.
PATENT LITIGATION SUPPORT - Pharmaceutical delivery devices and proprietary medicaments, including document review of corporate emails/ scientific references and claim construction
Oblon Spivak McClelland Maier & Neustadt P.C.
2005 - 2006
Prosecuted national and PCT applications relating to biologicals, inorganics, pharmaceuticals, polymers, diagnostic assays and mechanical devices; Filed responses to restriction requirements, office actions, preliminary amendments, preparation of sequence listings; Conducted examiner interviews; Reviewed files after allowance.
Olympic Patent Works PLLC
2003 - 2004
DRAFTING & PROSECUTION - Utility applications including directed evolution using mutant polymerases, longevity-promoting compounds, liposomal drug delivery, vector designs for recombinant protein production, tissue microarray, microarray-reference standards using combinatorial chemistry, normalization of microarray data, design/fabrication of high-density microarrays, and various mechanical devices.
PATENTABILITY SEARCH & OPINIONS - Prior art searches of patent and non-patent databases.