New Ideas In The New World | IP Law
Joseph F. Aceto, Ph.D.,Esq. Attorney at Law.
As an attorney licensed to practice in Pennsylvania and before the United States Patent and Trademark Office (USPTO), I practice intellectual property (IP) and associated legal services which include advice to facilitate commercial contracts or technology licensing agreements, corporate formation and governance for start-up companies, and legal guidance in marketing and business development. To this end, I prepare non-disclosure agreements, material transfer agreements, service agreements, research and development agreements, individual employment or consulting agreements, intellectual property transfer agreements, and others.
With over 20 years as an Intellectual property attorney, My practice includes prosecuting patent and trademarks at the USPTO, providing strategic counseling and global IP portfolio management, assessing infringement and patentability, due diligence analysis, international trademark registration, trademark opposition, and others. I represent clients in all aspects of patent and trademark prosecution both Internationally and at the USPTO. While these clients are primarily entrepreneurs, or start-up businesses, I also currently represent Universities, not-for-profit research institutions, and other corporate entities, at home and abroad which included a Fortune 100 pharmaceutical company. Exemplary representations involve a wide area of technologies from an improved fishing device and boating components to animal telemetry, computer software products, and new drug development, however most of my client’s technology is focused on medical devices, therapeutics, pharmaceuticals, and biotechnology.
In addition to my solo patent practice, I provide IP consulting services at Obermayer Rebmann Maxwell & Hippel, LLP (www.Obermayer.com) a large Philadelphia law firm, providing guidance on various trademark and copyright matters associated with corporate transactions or product branding and work with our litigation team to enforce certain IP infringement matters.
Prior to my current positions, I worked as in-house counsel for a publically-traded medical device company, Immunicon Corporation (NASDAQ IMMC) as Director of Intellectual Property. Before being purchased by Veridex LLC, Immunicon was a medical device company focused on developing a sensitive blood assay for detecting and monitoring circulating tumor cells as an index for cancer progression. I was chief counsel and worked in the development of the IP portfolio for a publically-traded cannabis startup company (Nexien BioPharma, Inc. NXEN). Currently, I am working with a new start-up in securing their IP portfolio which is in the early stages of drug development (GAIA Synthetics, Inc.).
Before my career in law, I worked in biomedical research, primarily in cardiology and cancer research, using technologies found in pharmacology, physiology, and molecular biology.
Currently, I serve on the Board of Directors for the Pennsylvania Drug Discovery Institute (PDDI) a non-profit organization which provides networking activities and other assistance to the scientific community, as well as entrepreneurship mentoring. (www.padrugdiscovery.org),
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Attorney Profile
Joe has extensive experience in biotechnology and life sciences both as an academic scientist and lawyer. Joe began his career in pharmacology and molecular biology and then transitioned into law about 15 years ago. He is licensed to practice law in Pennsylvania and before the United States Patent & Trademark Office. His work experience includes in-house counsel for a publicly-traded biotechnology company and of counsel for a large multi-discipline law firm. He has developed a loyal client following, ranging from start-up entrepreneurs in diverse technology areas within and outside life science, to non-profit research institutions, universities, and a Fortune 100 pharmaceutical company.
Joe is able to provide strategic counseling and global portfolio management for a company’s patent estate, having experience in all aspects of patent procurement, due diligence, infringement and invalidity opinions. He also works with clients in securing trademark protection in company and product branding and copyright registration for authored works. Joe has worked with clients in negotiating, drafting, and facilitating commercial contracts and licensing arrangements in many technology areas. Joe has authored many legal and scientific publications and is a member of the Board of Directors for the Pennsylvania Drug Discovery Institute (PDDI).