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Named one of The World’s Leading Patent Professionals in the "IAM Patent 1000" published by Intellectual Asset Management (IAM) magazine for the fourth consecutive year (2012 - 2015).
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Professional Profile
Mark R. Benedict is a partner in our Orange County office. His practice includes patent prosecution and strategic intellectual property portfolio management for pharmaceutical, biotechnology and life science clients.
Dr. Benedict’s practice includes patent prosecution, counseling on patent infringement, validity and licensing issues, management of patent and other intellectual property assets, intellectual property due diligence studies and related counseling for investors. He currently represents clients in a wide range of technology areas, including pharmaceuticals, biotechnology, engineered industrial enzymes, cellulosic ethanol production, animal and fish feed supplements, pigment extraction from plant materials, cosmetic chemistry, medical devices and other life sciences. He also represents a number of foreign associates in procuring U.S. patent protection for their clients in the pharmaceutical and biotechnology areas.
Prior to joining the firm, Dr. Benedict worked as a Research Assistant Professor of Pediatrics at the State University of New York, Upstate Medical Center, where he conducted basic and clinical research, under grants from the NIH and the American Heart Association, on the molecular and biochemical mechanisms of hormone and growth factor regulation of vascular smooth muscle cell proliferation, differentiation and aging. Prior to joining the faculty, he worked at the SUNY medical school as a post-doctoral research fellow in Pediatric Endocrinology. During his tenure at SUNY, Dr. Benedict published and spoke extensively in the areas of endocrinology and aging.
Dr. Benedict joined the firm in 1997 and became a partner in 2003.
Additional Information
Teaching/Adjunct Professor
Syracuse University - Undergraduate courses in biology, endocrinology, cell and molecular biology, and anatomy and physiology
Specializing In
Cases, Articles, Speeches & Seminars
Articles
Dr. Mark Benedict and Dr. Mark Metzke were featured in "Patent a Cure for the Common Cold? This Lawyer Did,"Corporate Counsel (September 2015).
Dr. Mark Benedict and Catherine Holland co-authored “Managing Intellectual Property Assets,” California Business Law Practitioner, Vol. 29 (4), Fall 2014.
Dr. Benedict co-authored a chapter entitled “Managing Intellectual Property Assets,” in Intellectual Property in Business Transactions, 2008, CEB; updated annually through 2012.
Speeches & Seminars
Dr. Benedict speaks on all areas of intellectual property law, at venues around the world, including:
- American Association of Immunologists: “Strategies for monetizing innovation” (Baltimore, 2010; San Francisco, 2011)
- Association of Corporate Counsel (ACC) Southern California Chapter: “IP due diligence” (2007 and 2008)
- BIO Pacific Rim Summit on Industrial Biotechnology and Bioenergy: Moderator for: "Revised Myriad Guidance from the US Patent and Trade Office (USPTO) - Now What is Patentable?" (December 2014)
- CALBIO 2013: Moderator for "Navigating the Technology Transfer Maze" (June 2013)
- Center for International Legal Studies, Austria:
- “U.S. biotechnology patent law” (2003);
- “U.S. pharmaceutical regulatory law” (2004);
- “Strategies for securing exclusivity for pharmaceutical inventors” (2005);
- “Antitrust analysis of patent settlements in generic drug litigation” (2007); and
- “Gene patents under fire: the Myriad Case” (2011)
- Jiangsu Province, China: “U.S. patent strategies for Chinese pharmaceutical companies” (Wuxi, China, 2010)
- Licensing Executives Society: “Integrating IP and business strategies during early stages of a company’s lifecycle” (Irvine, 2011)
- OCTANe, Second Annual Orange County Summit on Regenerative Medicine: "Commercialization of Stem Cell Technology" (Irvine, 2014)
- Society of Cosmetic Chemists: “Intellectual property protection in the field of cosmetics and personal care products” (Los Angeles, 2013)
- Southern California Biomedical Counsel, Los Angeles:
- “Government funding options for biomedical companies” (2009); and
- “IP strategies for managing the dynamics of risk, innovation and globalization” (2010)
- University of California, Irvine: “U.S. intellectual property in the business of medicine” (2009 and 2010)
Professional Memberships
American Bar Association (ABA)
Orange County Patent Law Association (OCPLA)
Orange County Bar Association (OCBA)
Orange County Barristers (Board of Directors, 1999-2001)
Licensing Executive Society (LES)
Co-Chair – Orange County Chapter (2004 – 2008)
The Endocrine Society
California State University Fullerton, Dept of Pharmaceutical Engineering (Scientific Advisory Board)
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