Geoff Karny helps clients solve problems, seize opportunities, and
create value. He brings over 30 years of unique experience to meeting the specialized needs of life science and technology
companies. His cross-disciplinary experience in intellectual property, transactional, and regulatory law facilitates
issue identification, problem solving, and value creation. His combination of law firm and in-house experience results
in business-oriented solutions to legal problems.
Geoff’s practice focuses on intellectual property, particularly
patent law. He has been responsible for developing and implementing corporate IP strategies, starting corporate patent
departments, building patent and trademark portfolios, negotiating and preparing technology transaction agreements, and conducting
IP due diligence in corporate transactions. In addition, Geoff has rendered patentability, freedom-to-operate, non-infringement,
and invalidity opinions, and he has guided patent interference and opposition proceedings. Geoff has worked in virtually
all technical areas of biotechnology.
In addition to his 14 years of experience with major law firms, Geoff managed
the patent departments of two biotech companies, Gene Logic Inc. and Genetic Therapy Inc., and he was a senior patent counsel
for Novartis Pharmaceuticals Corp. He was heavily involved in a wide range of IP transactions with companies, universities,
and the NIH Office of Technology Transfer. This experience has made him especially attuned to the business needs of
companies and the challenges faced by in-house counsel.
Geoff gained substantial experience with software patents
and licensing while at Gene Logic. He has continued to practice in these areas.
Geoff also has substantial
experience in relevant regulatory law. After joining his first law firm, he practiced FDA and export control law as well as
patent law. Geoff started his legal career at the Securities and Exchange Commission. His experience with the disclosure
requirements for securities offering documents provides special insights in conducting IP due diligence for venture capitalists
and underwriters.
Geoff testified at four Congressional hearings and was the principal or contributing author of
eight reports on biotechnology. He has written numerous articles on patenting, licensing, and regulating technology
and has made more than 50 presentations on these topics to industry, scientific, legal, and government audiences.
In February 2008, Geoff started his own law firm to provide high-quality, business-oriented
legal services at a cost-effective price. His clients are organizations and individuals who want partner-level attention
and large law firm expertise without paying large law firm rates.
Areas of Expertise
- Intellectual Property
- Licensing
- Life Sciences
- Biotechnology
- Bioinformatics
- Software
Education
- Cornell
University, B.A. in Chemistry
- New York University School
of Law, J.D.
Bar Admissions
- Virginia
- District of Columbia
- U.S. Patent and Trademark
Office
Honors and Selected Professional Activities
- Washington, D.C. Super Lawyers, 2007 and 2008
- Virginia Super Lawyers, 2006
- Vice
Chair, Patent Office Practice Committee, Intellectual Property Owners Association, 2007
- Member, Board of Directors, Intellectual Property Owners Association, 1994-1996
- Chair, Patent Law Committee of the Association of Biotechnology Companies. Received
special recognition award for establishing and running committee, 1992
Professional Associations
- Biotechnology
Law Report, Editorial Board
- Tech Council of Maryland
- Virginia Biotechnology Association
- American Intellectual Property Law Association
- Intellectual Property Owners Association
- Licensing Executives Society
Selected Publications and Presentations
"IP Due Diligence: Getting It Right," Virginia Bio IP Webinar Series, June 22,
2016
"Creating Value with Intellectual
Property," Montgomery County, Maryland Incubator Luncheon, October 30, 2008
"Patent
Licensing After MedImmune" and "Patent Injunctions after eBay," 2007 Mid-Atlantic Bio Conference, Bethesda,
MD, October 25, 2007
"Business Strategies for Molecular Diagnostics in the Lab," Contributor,
Washington G-2 Reports, 2007
"Opinions of Counsel for Pharma and Biotech Patents,"
ACI Pharma/Biotech Patent Boot Camp, San Francisco, CA, September 18, 2007
"Diagnostic
Testing – What Is Patentable," ACI 8th Advanced Forum on Biotech Patents, Menlo Park, CA, April 19, 2007
"In Defense of Gene Patenting," Genetic Engineering & Biotechnology News, p. 6, April 1, 2007
"Due Diligence in Technology Licensing," Presentation to NIH Office of Technology Transfer, Rockville, MD, March
20, 2007
"Patents on Molecular Diagnostics," G-2 Reports Second Annual Molecular Diagnostics
Conference, Tampa, FL, February 8, 2007
"Using Intellectual Property to Create Value,"
Biotech Management Institute Annual Meeting, Rockville, MD, February 17, 2006
"How to Set
a Patent Strategy," Legal Times, p. 40, June 20, 2005
"Using Intellectual Property
to Create Value," Biotech Management Institute Luncheon, Rockville, MD, October 17, 2004
