Paul L.Sharer

Of Counsel

Washington + 1.202.879.5481

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Paul Sharer has 25 years of intellectual property experience in developing and managing patent portfolios for complex technologies in strategic industries to support investment growth and exploitation of patent rights. He has particular experience in specialty chemicals, pharmaceuticals, biotechnologies, drug delivery, medical devices, software, cybersecurity, blockchain, and financial services. Paul advises start-ups, emerging companies, multinational corporations, and financial market corporations in developing and maintaining strategic patent estates.

Paul has extensive experience in assisting clients with worldwide intellectual property protection strategies as well as post-grant procedures (PGR [post-grant review], IPR [inter partes review]), patent litigation, and licensing/settlements. His experience includes patentability, infringement/noninfringement, validity/nonvalidity, freedom-to-operate/clearance, and prelitigation opinions. He has obtained more than 800 patents for clients in a wide variety of technological arts including software, cybersecurity, blockchain, financial services technologies, pharmaceuticals, medical devices, medical diagnostics, combination therapies, research diagnostics (assays), biotechnology, DNA and protein diagnostics, disease markers, nanotechnology, gene shuffling, small molecule drugs, drug delivery, coatings, organic chemistry, polymers, additives, active plant extracts, biodiagnostic tools, adjuvents, surfactants, consumer products, health care and personal care, and business methods (financial instruments, banking, and insurance).

Paul frequently works with clients to provide design around, offensive and defensive portfolio strategies, and other litigation avoidance counseling. He has conducted numerous IP due diligences for licensing, financial investment, prelitigation, and acquisitions projects. In addition, Paul has served as a guest lecturer at Georgetown Law and is a frequent speaker on intellectual property matters and provides in-house training for technical staff and counsel.

Experience

  • Ensyn Renewables establishes technology to convert biomass residue to biocrudeJones Day represents Ensyn Renewables, Inc. in strategically developing its international patent portfolio directed to diverse innovations including catalytically cracking renewable fuel oil and petroleum and thermally processing biomass residues for use in heating systems.
  • HyTech Power develops patent strategy, enters into joint venture for automobiles with Joe Clark, co-founder of Aviation PartnersJones Day is assisting HyTech Power LLC in the development of their global patent strategy directed to engine performance and emissions abatement technology for off-road vehicles and on-road vehicles, which has led to a new joint venture with Joe Clark, the co-founder of Aviation Partners, Inc.
  • Nephron Pharmaceuticals expands nebulizer product offeringsJones Day is providing intellectual property advice to Nephron Pharmaceuticals Corporation to assist the leaders in blow-fill-seal technology in delivering better nebulizer products to healthcare patients.
  • StealthPath develops patent portfolio to secure their cybersecurity IP assetsJones Day is providing intellectual property advice and guidance on patent strategy and portfolio development to support StealthPath, Inc., a high-value cybersecurity startup.
  • Turnbridge Capital invests in Gradiant Energy ServicesJones Day advised Turnbridge Capital, LLC in connection with its investment in Gradiant Energy Services, a provider of integrated water management solutions to the energy industry.
  • PMFG acquires Combustion Components AssociatesJones Day advised PMFG, Inc. in the acquisition of Combustion Components Associates, a leading provider of in-furnace and post-combustion control technologies.
  • TPG Alternative & Renewable Technologies Fund and TPG Biotechnology Fund invest in ChemEORJones Day advised TPG Alternative & Renewable Technologies Fund and TPG Biotechnology Fund in connection with their investment in ChemEOR, Inc., a producer of oil field stimulation chemical formulations with lower environmental impact and improved effectiveness.
  • Saputo acquires dairy and non-dairy extended shelf-life producer Morningstar Foods from Dean Foods Company for $1.45 billionJones Day advised Saputo, Inc. in its acquisition of Morningstar Foods, LLC, a wholly-owned subsidiary of Dean Foods Company, for $1.45 billion.
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    January 2019 Commentary

    USPTO Releases New Guidance on Patent Subject Matter Eligibility

    Additional Publications

    • 2005
      Legal Affairs–A New Dimension in Biotechnology Patent Portfolio Management, coauthor, Genetic and Engineering News
    • 2005
      International Patents and International Harmonization, coauthor, BioPharma International
    • 2005
      Chapter 5 – Protecting Intellectual Property in E-Commerce Software Patents, coauthor, E-Commerce Financial Products & Services, Smith, Law Journal Press

    Speaking Engagements

    • June 22, 2011
      Executive Roundtable Series - Growing Your Business: How to Handle Legal and Regulatory Hurdles Both Before and After They Arise
    • September 15, 2010
      Mastering Mergers and Acquisitions, NBI Webcast
    • September 28, 2007
      Resolving Technology and Media Disputes Before Trial 2007
    • 2006
      Intellectual Property Considerations for Preventing or Anticipating, Patent Litigation and Protection: A Forum for the Pharmaceutical, Biotechnology, and Biopharma Counsel
    • 2006
      Doing Business in China: Legal and Political Issues, Succeeding in China Seminar by JPMorganChase
    • 2003
      A Practitioner’s Look at the Patent Process, GTCBIO Conference on VACCINES: From Political, Socio-Economic, Scientific, Provider, User and Legal Viewpoints

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