Barbara J. Luther, J.D.
Partner and Founder

Ms. Luther is a highly respected AV rated intellectual property attorney with more than 18 years of experience. She works with companies and individuals assisting them in protecting their intellectual property assets and optimizing the business value of those assets whether patents, trademarks or copyrighted material.

Licensed to practice before the U.S. Patent & Trademark Office, Ms. Luther assists clients with utility (composition of matter, method of formulating, methods of use) and design patent applications, trademarks and copyrights. She negotiates with patent office examiners and executives to achieve patents that are as broad as possible.

Ms. Luther analyzes patent portfolios to recommend improved protection, such as additional claims or patent applications, drafts and negotiates patent, software and prototyping licenses, as well as other agreements. She also provides patentability and infringement opinions. She also trains employees in the multiple aspects to intellectual property and employee duties to preserve the potential intellectual property of their employers. She patents early stage products. Ms. Luther has supervised the creation and maintenance of IP docketing systems as well as company quality control procedures.

In the areas of E-commerce and Web site usage, Ms. Luther advises clients on presentation. She analyzes literature and patents in new fields for start-ups and other companies, and educates scientists and other employees on their intellectual property duties, including invention disclosures, material transfer and trade secrets.

In instances where international protection is recommended, Ms. Luther has established a cadre of international patent and licensing affiliates with whom she works.

REPRESENTATIVE MATTERS

• Obtained the very first FDA approval of a printed contact lens. Negotiated directly with the FDA and fought vigorously for marketing rights, winning her argument against the strictly regulated government agency after managing definitive preclinical and clinical studies.

• Counseled and obtained patent protection for a simple method of disguising and disposing of medical waste for two inventors. This persuasive patent was used to motivate investors for early fund-raising and progress on the path to success for Stericycle, Inc., now a global, publicly traded company worth nearly $3 billion.

• Joined an early-stage company developing inventions related to the Human Genome Project at a time when DNA, pharmaceuticals and nutraceuticals were extremely difficult to protect.  Spearheaded efforts to make patent standards fairer for the entire field.  As a result, the US patent office issued new Utility Guidelines with clear grounds for issuing medical patents, including those for genomics.  The value of the genomics company soon exceeded a billion dollars.

• Worked with licensees of Stanford University, guiding the patenting of the basic sample preparation method for the multibillion genomics industry. The resulting patents withstood court challenge, generating a seven-figure court settlement and millions annually from licenses to many household-name corporations.

EDUCATION

• University of California Extension
  (Coursework in Genetics, 1994-1995)

• Loyola University of Chicago, School of Law
  (Juris Doctor, 1989)

• Keller Graduate School of Management
  MBA, emphasis in Marketing

• Northwestern University, Feinberg School of Medicine (Six-Year Honors Program to MD)
  (B.S. in Medicine, 1972)

ADMITTED TO PRACTICE

United States Patent and Trademark Office, 1990
State of California
State of Arizona
State of Illinois

PUBLICATIONS AND PRESENTATIONS

“International Licensing of Intellectual Property,” International Law Group of AZ Bar, April 17, 2007

“Biomedical Software for the Future,” UA, Tucson, Fall 2004

“Licensing for Town and Gown”, March 2003, Nevada Technology Council, Reno, NV.

“Licensing for Inventors”: March 2002, Northern NV Inventors Club, Reno, NV.

Update on Licensing Genomics and a New Approach, LES Spring Meeting, Napa Valley, 1998

“Patent Office Techniques for Computerized Gene Sequence Analysis,” Address to P.I.P.L.A., May 6, 1996, Stanford Park Hotel, Menlo Park, CA.

"Legal Notes: Getting the Most From Your Patents," Medical Device & Diagnostic Industry, Vol. 13, No. 1, pp. 46, 48, 50-52, January 1991.

OTHER PROFESSIONAL EXPERIENCE

Incyte Genomics, Inc., Palo Alto, CA
Director of Intellectual Property

Morrison & Foerster, Palo Alto, CA
Patent Associate Attorney

Brinks Hofer Gilson & Lione, Chicago, IL
Intellectual Property Associate Attorney

Schering-Plough, Wesley-Jesson Division, Chicago, IL
Regulatory Affairs Specialist

MEMBERSHIPS AND AFFILIATIONS

American Bar Association
Arizona Biotechnology Association
Arizona Technology Council
Better Business Bureau
Licensing Executives Society
Maricopa Bar Association
National Association of Women Business Owners
Scottsdale Bar Association
Scottsdale Chamber of Commerce