Adriana L. Burgy
Adriana Burgy leads Finnegan's patent office practice. Her practice focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. Ms. Burgy brings a unique perspective by blending her legal, technical, and industry experience.
Ms. Burgy counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. Client counseling also comprises Ms. Burgy's practice. She has assisted clients in the early stages of development through due diligence and patent portfolio analysis. Additionally, Ms. Burgy frequently counsels clients regarding prelitigation considerations.
From a patent prosecution perspective, Ms. Burgy has drafted and prosecuted numerous patent applications domestically and internationally, guided and advised clients on complex procedural and legal issues surrounding clients' patent portfolios, developed and implemented strategic prosecution in support of ongoing litigation, generated strategies for maximizing investment in patent portfolios, and facilitated the identification of high-priority applications within patent portfolios. Ms. Burgy's experience includes patentability searching, reexaminations and reissues, and appeals to the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). With the changing landscape under the America Invents Act (AIA), Ms. Burgy has counseled clients to prepare for the historic reforms, and to develop long-term strategies moving forward under this new regime.
Ms. Burgy routinely provides legal education and client seminars on various aspects of U.S. patent law and practice with a particular emphasis on practical tips and applications. She has presented on a range of topics, including patent application drafting, patent infringement, validity, and enforceability; restriction requirement practice; obviousness and the use of effective post-filing evidence; and various AIA topics.
- Manages the prosecution of hundreds of patent applications domestically and internationally directed to consumer products, pharmaceuticals, and small molecules.
- Boston Heart v. Health Diagnostic Laboratories (PTAB). Successfully represented HDL in an inter partes review (IPR) brought by Boston Heart related to HDL's patent directed to screening methods for pre-diabetes, resulting in PTAB denying instituting the petition.
- Editor-in-chief of IDEA: The Journal of Law and Technology, 2001-2002.
- Served as legal extern to the Honorable James E. Duggan, Justice at the New Hampshire Supreme Court, 2001.
- Served as teaching assistant for Franklin Pierce Law Center's Fundamentals of Intellectual Property course, 2001.
- Analytical chemist at MedImmune, Inc. and Genetic Therapy, Inc., 1996-1999.
- Recognized by The Legal 500 U.S. for patent prosecution, re-examinations, and post-grant proceedings, 2014-2016.
- American Chemical Society
- American Intellectual Property Law Association (Editorial Board, AIPLA Quarterly Journal, 2013-2016)
- American Bar Association
- District of Columbia Bar Association
- Serves as an editor for Finnegan's patent blog Prosecution First; and as an editor and contributor for Finnegan's AIA blog on PTAB trials and AIA provisions.
- Coauthor. "Pre-ANDA Litigation: Strategies and Tactics for Developing a Drug Product and Patent Portfolio," ABA Section of Intellectual Property Law, 2014.
- Editor. The Chemical and Pharmaceutical Innovation Report 2013, Dec. 2013.
- Coauthor. "America Invents Act Final Rules: First-Inventor-to-File," LES Patent & Technology Committee News Alert, March 29, 2013.
- Coauthor. "First-Inventor-to-File: Final Rules Revealed," IPPro The Internet, March 5, 2013.
- Coauthor. "Demystifying IP Due Diligence," Managing Intellectual Property, June 1, 2006.
- Coauthor. "The Inequitable Conduct "Plague" in U.S. Patent Litigation: Is It Over and Is the CAFC Moving Away from An Absolute Liability Standard?" BNA International's IP & Technology Programme, April 2006.
- Coauthor. "Drafting Patent Validity & Infringement Opinions," Patent Resources Group course, 2005.