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Jeffrey I Auerbach

Jeffrey I Auerbach

Practice areas:

Life Sciences & Biotechnology, Intellectual Property, Patent Application, Licensing, Patent Infringement

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About Me

Jeffrey I. Auerbach is a member of AuerbachSchrot LLC, a Rockville, Maryland intellectual property and technology law firm.  Dr. Auerbach received his B.S. degree in biochemistry, genetics, and microbiology from Cornell University in 1975.  He received his M.Phil. and Ph.D. degrees in molecular biophysics and biochemistry from Yale University in 1977 and 1981, respectively.  Before entering into a career in patent law, Dr. Auerbach served as a research scientist at the Laboratory of Molecular Biology of the National Cancer Institute, at W.R. Grace & Company, and at SmithKline & French Laboratories (where he received that company’s highest research award).  Dr. Auerbach has also served as an Examiner of immunology patents for the U.S. Patent & Trademark Office.


He began his career in patent law in 1985 and received his J.D. degree in 1989, from the National Law Center of George Washington University.  Prior to joining AuerbachSchrot, Dr. Auerbach was an associate at Weil, Gotshal & Manges, and a partner at Howrey, LLP.  Dr. Auerbach’s practice focuses on the preparation and prosecution of patent applications relating to molecular biology, genetics, therapeutics, diagnostics and bioinformatics, on strategic counseling and on the enforcement and exploitation of patent rights. 


Dr. Auerbach’s clients range from multinational corporations such as H. Lundbeck A/S to younger companies such as MacroGenics, to major academic and research institutions such as the University of Maryland.  Dr. Auerbach has significant experience in patent licensing, trade secret law and patent litigation.  He has served as counsel in some of the most complex biotechnology licensing, trade secret and patent disputes to have arisen in the past 20 years.  Dr. Auerbach is also a noted inventor, having received patents in the United States and throughout the world for his own inventions in vaccine production and in isothermal “rolling circle” nucleic acid amplification.  He was a co-founder and president of Replicon, Inc., a Maryland biotechnology company focused on the use of “rolling circle” amplification in diagnostics, genomics and therapeutics.  He served as president of DC Associates, LLC, a biotechnology licensing company, and as an advisor to Trade Logistics & Strategies, LLC, a venturing company.  Dr. Auerbach has served as a member of the Washington, DC Board of the American Committee for the Weitzman Institute of Science, and as a Diplomat of the Institute.


Dr. Auerbach is a member of the bars of Maryland and the District of Columbia.  He is also a member of the bars of the U.S. District Courts for the Districts of Maryland and District of Columbia Circuits, and of the U.S. Courts of Appeals for the District of Columbia and Federal Circuits.  He is registered to practice before the U.S. Patent and Trademark Office.  Dr. Auerbach has served as an adjunct faculty member of the Johns Hopkins University, teaching courses on biotechnology law and biotechnology enterprise.  He has served as co-chair of the Intellectual Property Section of the Montgomery County Bar Association.  Dr. Auerbach is the author of many publications, including the web monograph “Patent Law Principles and Strategies.”  His biography has appeared in “Marquis Who’s Who in American Law” and “Marquis Who’s Who in America.”  He is nationally peer-rated by Martindale-Hubbell.

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Languages Spoken: French

Practice Areas

Licensed since 1989

  1. Life Sciences & Biotechnology: 50%
    29 years, 200 cases
  2. Intellectual Property: 20%
    29 years, 60 cases
  3. Patent Application: 15%
    29 years, 200 cases
  4. Licensing: 10%
    27 years, 10 cases
  5. Patent Infringement: 5%
    25 years, 6 cases

Payment

Fees:

Hourly ($400-425/hour)

Payment Types:

Cash, Check

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Contact Info

AuerbachSchrot LLC

2200 Research Blvd.
Suite 560
Rockville, MD, 20850-6120

Resume

License
StateStatusAcquiredUpdated
MDActive199007/14/2015
DCActive 198905/25/2015

Professional Misconduct

We have not found any instances of professional misconduct for this lawyer.
Avvo Contributions
Legal Answers
Awards
Award NameGrantorDate Granted
Certified Licensing Professional [CLP(tm)]Certified Licensing Professionals, Inc.2008
CV(R) Certification Peer RatingMartindale-Hubbell (Reed Elsevier Properties, Inc.)2008
Marquis "Who's Who in American Law"Marquis Who's Who LLC2000
Marquis "Who's Who in America"Marquis Who's Who LLC2000
Battlefield AwardSmithKline & French Laboratories1984

Work Experience
TitleCompany NameDuration
Managing MemberAuerbachSchrot LLC2013 - Present
PartnerThe Auerbach Law Firm, LLC2011 - Present
PartnerEdell, Shapiro & Finnan, LLC2005 - 2011
PresidentDC Associates, LLC2003 - Present
Adjunct FacultyJohns Hopkins University2000 - 2009
PartnerBerenato, White & Stavish2000 - 2005
PartnerHowrey & Simon1993 - 2000
PresidentReplicon, Inc.1992 - 2003
AssociateWeil, Gotshal & Manges LLP1991 - 1993
Law Clerk --AssociateSaidman, Sterne Kessler & Goldstein1986 - 1990

Associations
Association NamePosition NameDuration
Bar Association of Montgomery CountyIP Section Co-Chair2009 - 2010
Licensing Executives SocietyN/A2007 - Present
American Intellectual Property Law AssociationN/A2007 - Present
Association of University Technology ManagersN/A2006 - Present
Bar Association of Montgomery CountyIP Section Co-Chair2005 - 2007
American Bar AssociationN/A2003 - Present

Legal Cases
Case NameOutcome
Abbott Laboratories, Inc. v. Coulter Corp.Case dismissed
Cel-Sci Corp. v. Immuno-Rx et al.Suit Dismissed
Rhone Poulenc Agro SA v. Monsanto Co. and DeKalb Genetics CorporationComplex Resolution

See all Legal Cases 

Publications
Publication NameTitleDate
Project for the Strategic Development of Industry-University-Government CollaborationCollaborating and Partnering with US Biotechnology Companies2009
Technology Transfer TacticsTake Steps To Protect Your IP When A Licensee Faces Possible Bankruptcy2007
Patent Law Principles & StrategiesPatent Law Principles & Strategies2007

Education
School NameMajorDegreeGraduated
George Washington University National Law CenterIntellectual PropertyJD - Juris Doctor1989
Yale UniversityMolecular Biophysics & BiochemistryPhD - Doctorate1981
Yale UniversityMolecular Biophysics & BiochemistryM. Phil.1977
Cornell UniversityBiology & MicrobiologyB.S.1975

Speaking Engagements
Conference NameTitleDate
Project for the Strategic Development of Industry-University-Government CollaborationKeynote Address: Collaborating and Partnering with US Biotechnology Companies2009
Fall 2006 MeetingImpact of Recent Court Cases on Patent Licensing2006
Embryonic Stem Cells: The Promise and the ControversyEmbryonic Stem Cell Technology2006
CLE Lecture Spring 2006IP Issues for the Non-IP Lawyer2006
Legal Aspects of BiotechnologyBiotechnology Patent, Trade Secret and Trademark Law2005
CLE Lecture Spring 2005IP Issues for the Non-IP Lawyer2005
Legal Aspects of BiotechnologyBiotechnology Patent, Trade Secret and Trademark Law2001
Legal Aspects of BiotechnologyBiotechnology Patent, Trade Secret and Trademark Law2000