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BONNIE CARNEY
OF COUNSEL
Direct Dial: 914.821.9079
Carney@LeasonEllis.com
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PROFESSIONAL PROFILE:
BONNIE KRAMER CARNEY
concentrates her intellectual property practice on the
pharmaceutical and biotechnology patent sectors. She is experienced
in all aspects of patent law as related to this industry including
patent procurement, both domestically and abroad, management of
patent portfolios, freedom-to-operate and patentability opinions and
the searches related to these activities, due diligence,
inventorship investigations and opinions, and European patent
practice. Ms. Carney's clients have included Fortune 500 companies,
small start up firms, and hospitals and universities.
Ms. Carney also has litigation experience in Federal Court as well
as experience with interferences in front of the United States
Patent and Trademark Office.
Before being Of Counsel to Leason Ellis, Ms. Carney was associated
with Darby & Darby, P.C. Earlier in her career, Ms. Carney was
associated with Morgan & Finnegan, where she was involved some of
the early biotechnology disputes related to erythropoietin and
Factor VIII.
Patent Procurement
Most recently, Ms. Carney has assisted clients in obtaining
patents and managing patent portfolios in such diverse areas as
wound care, cold medicine, and immune factors. Whether the client is
a large pharmaceutical corporation or a not-for-profit hospital, Ms.
Carney considers the value of the particular invention in question,
by itself, in the context of a larger portfolio, and also in
relation to the client's business objectives, and applies her
understanding in providing advice on the scope of patent protection
that should be sought.
Additionally, she has worked closely with foreign counsel to procure
patents in other countries, and has been to the European Patent
Office to assist foreign counsel in opposition proceedings.
Opinions
Ms. Carney has performed and analyzed many searches related to
patentability, freedom to operate and due diligence opinions, and
has drafted opinions of each type. These opinions have included such
varied subject matter as transgenic mice, stem cells, and various
types of assays. She has also considered non-infringement and
invalidity issues for families of patents for clients considering
generic biologics and new therapies. These studies have involved
working with the client to determine the metes and bounds of the
considered product, and then looking at both weaknesses in any of
the issued patents and areas where the considered product can be
changed to avoid infringement. These studies have included subject
matter related to erythropoietin, therapies for Alzheimer's Disease,
and the transcription factor, NF-kB.
BAR ADMISSIONS
New York
Registered Patent Attorney: United States Patent and Trademark
Office
EDUCATION
J.D., with Honors, George Washington University, 1990
B.S., Molecular Genetics, University of Rochester, 1985
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