Gary J. Speier
Attorney Minneapolis, Minnesota Shareholder
Gary Speier is a registered patent attorney and shareholder with Schwegman, Lundberg & Woessner. His practice includes many facets of patent law, including patent preparation, prosecution, due diligence, opinion drafting, client counseling, clearance reviews and technology licensing and transfer agreements. Gary also counsels clients on legal issues relating to chemical and pharmaceutical patents, including patent enforcement, validity and infringement, licensing, collaborations, due diligence and business development. His experience in transactional matters for chemical and pharmaceutical clients includes IP due diligence. Gary 's experience with clearance reviews and legal opinions has included a significant amount of work related to Paragraph IV certifications for Abbreviated New Drug Applications (ANDA) under the Hatch-Waxman Act.
Gary represents clients in diverse areas of technology, and has obtained patents in the areas of chemistry and pharmaceuticals. Specific areas of patent technology experience include small molecules, macrocycles, biologicals, polymers, peptides, peptidomimetics, oligonucleotides, carbohydrates, medical treatments, industrial chemicals, medical devices, cosmetics, drug delivery systems, nutraceuticals, natural products, agricultural products, process engineering, nanoparticles and food chemistry. Additional specific areas of patent technology experience include the Green technologies such as fuel cells, batteries, biofuels, biomass conversions, water purification, plastics recycling, bio-friendly plastic alternatives, as well as solar, wind and geothermal energies. Please see "Representative Patents."
Gary has represented universities, non-profit research institutions, sole inventors, branded pharmaceutical companies as well as generic pharmaceutical companies. He has lectured on various topics including pharmaceutical patent life cycle management (LCM), IP licensing issues, Green technologies, as well as legal opinions to support Paragraph IV certifications for Abbreviated New Drug Applications (ANDA) under the Hatch-Waxman Act.
Gary is a Foundational Service Advisor for the Minnesota Angel Network (www.mnan.org), where he provides pro bono legal services in the field of chemicals, pharmaceuticals, biotechnology and medical devices. The Minnesota Angel Network (MNAN) is a non-profit organization whose mission it is to create a world-class educational program to better prepare entrepreneurial companies for the rigors of fundraising using its angel network and other successful angel networks across the nation. The Minnesota Angel Network has additional services to best support the entrepreneurs and investors in Minnesota. Unique services include a systematic filtering and mentoring process, access to service providers, and a detailed gap analysis to best assess each company’s needs.
Gary received his undergraduate degree from Fordham University (B.S. Chemistry, 1988), where he received the Sigma Xi award for outstanding research on the undergraduate level. He received a M.S. from Villanova University (organic chemistry, 1991), and a law degree from Temple University (J.D., 1996). Gary worked as a medicinal chemist at Sterling Winthrop Pharmaceuticals (1991-1994). During law school, Gary worked at SmithKline Beecham as a law clerk in the Intellectual Property Department. Gary was an associate at Seed and Berry (1996-1998) where he worked in the chemical/biotechnology group. Gary 's professional association memberships include the American Intellectual Property Law Association (AIPLA), American Chemical Society (ACS), Licensing Executive Society (LES), and Minnesota Intellectual Property Law Association (MIPLA). Gary is permitted to practice law in Minnesota, New Jersey and Pennsylvania. Gary practices in the firm's home office in Minneapolis, Minnesota.
- Temple University School of Law, Philadelphia, PA, 1996
- Villanova University, 1991
- M.S.
- Major: Organic Chemistry
- Fordham University, 1988
- B.S.
- Sigma Xi Award for Outstanding Research
- Major: Chemistry
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American Intellectual Property Law Association
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American Chemical Society
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Licensing Executive Society
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Minnesota Intellectual Property Law Association
- Sterling Winthrop Pharmaceuticals, Medicinal Chemist, 1991 - 1994
- SmithKline Beecham, Law Clerk, Intellectual Property Department
- Seed and Berry, Associate, 1996 - 1998
May 18, 2011, C5 8th International Forum on Freedom to Operate, Sofitel Munich Bayerpost; Munich, Germany, Conducting a freedom to operate clearance review: a best practices’ approach
May 3, 2011, Basel IP Lecture (BIPL) Series, Basel, Switzerland, How to efficiently perform FTO-Analysis with the help of intelligent IT
April 06, 2011, Licensing Executives Society (LES), Aerospace & Transportation (A&T) Subcommittee, Webinar (1-2pm, PST), Patent Claims Matrix™ software tool for freedom-to-operate (FTO)
January 20, 2011, Pharmexcil (pharmaceuticals export promotion council), Sipra Labs Limited, Sanathnagar, Hyderabad, India, U.S. Patent Law and its Impact on Indian Pharma Industry
January 18, 2011, Academy of Intellectual Property Studies (AIPS), The Mirador Mumbai, India, Session I: Protecting Biotech and Pharma Inventions in U.S and Europe: Strategies and pitfalls. Session II: IP Challenges for Biosimilars
November 17, 2010, Korean Biological Industry Association (KBIO) and Korean Pharmaceutical Manufacturers Association (KPMA), Seoul, S. Korea, Freedom-to-Operate (FTO): Next Generation Approach; and Generic Pharmaceuticals in U.S.
November 9, 2010, Kurusu Patent Law Office (Kazunori Kurusu), Nagoya, Japan, Obviousness after KSR v. Teleflex: A practical Perspective
November 10, 2010, Kurusu Patent Law Office (Kazunori Kurusu), Tokyo, Japan, Obviousness after KSR v. Teleflex: A practical Perspective
October 4, 2010, Iowa Intellectual Property Law Association (IIPLA), Des Moines, Iowa, Freedom to operate (FTO): Super Claim Mapping
August 25, 2010, AIPLA/Association of Singapore Patent Agents (ASPA), Webinar (9-10pm, EST), U.S. Patents: Inventorship
June 29-30, 2010, Marcus Evans, Washington, D.C., Use of Pharma’s Almanac™ software tool for opinions to support Para IV certification (ANDA)
June 14-16, 2010, International Fuel Ethanol Workshop & Expo (FEW), America's Center, St. Louis, Missouri, Freedom-to-Operate Clearance Reviews for CleanTech
May 6, 2010, The Collaborative, The Metropolitan, Golden Valley, MN, Cleantech: Recycling and Business
March 5, 2010, West Michigan Corporate IP Roundtable, Western Michigan University Technology Park, Freedom-to-Operate Clearance Reviews and Patent Landscapes: Super Claim Charting
Wednesday March 3, 2010, Association of University Technology Managers (AUTM), Webinar (12-1:30 p.m. EDT), Basic Patenting 101
January 22, 2010, Data Resources, Inc., Sumitomo Sky Room in Shinjuku, Tokyo, Japan, Freedom to Operate with GreenTech Technology
December 17, 2009, Licensing Executives Society (LES), University of Minnesota (Minneapolis, MN), Launching commercial products in the U.S.: Freedom-to-operate (FTO) analysis
July 23, 2009, Association of University Technology Managers (AUTM), Webinar (12 p.m. to 1:30 p.m. EDT), Basic Patenting 101
July 14, 2009, Sunlight Research, Minnesota Landscape Arboretum (Chaska, MN), Commercializing Technology in the US: Freedom-to-Operate (FTO) Clearance Reviews
May 4, 2009, Schwegman, Lundberg & Woessner (SLW) and Lakshmikumaran & Sridharan (L&S), Webinar (7:30 a.m. to 9:00 a.m. CDT), Use of Pharma’s Almanac™ software tool for opinions to support Para IV certification (ANDA), Hatch-Waxman litigation and re-examination as an alternative to litigation
April 10, 2009, Schwegman, Lundberg & Woessner (SLW) and Lakshmikumaran & Sridharan (L&S) , Webinar (7 a.m. to 8:30 a.m. CDT), Freedom-to-Operate Clearance Reviews upon Entering U.S. Market
March 26, 2009, Ocean Tomo Spring 2009 Live IP Auction, The Ritz-Carlton, San Francisco, CA, Roundtable discussion on “Greentech Patenting Trends”
September 25, 2008, German Technical Corporation (GTZ) Hyderabad , Hotel Taj Krishna, Hyderabad, India, U.S. Generic Pharmaceutical Market: Sustaining a Competitive Advantage, Focus on India
September 24, 2008, Anna University, Chennai, India and Department of Information Technology, Ministry of Communication and Information Technology, Hotel Park Sheraton, Chennai, India, USA and International Patenting
September 23, 2008, Ministry of Small Micro and Medium Enterprises Development Institute (MSME- DI), Chennai, Hotel G R T Grand, Chennai, India, U.S. Patenting- Legal Opinions, Patent Life Cycle, KSR v. Teleflex, USPTO rules changes, Overview of ANDA (Hatch-Waxman Act) Litigation, Looking Ahead, India vs. China
May 12 to 13, 2008, SMi Group Ltd Conference on Generics, Super Generics and Patent Strategies, Crowne Plaza Hotel – The City, London, United Kingdom, U.S. Generic Pharmaceutical Market: Branded vs. Generics
February 4, 2008, Academy of Intellectual Property Studies (AIPS), Mumbai, India, Hatch-Waxman Litigation: Sustaining a Competitive Advantage in the U.S. Generic Pharmaceutical Market
January 30, 2008, Schwegman, Lundberg & Woessner (SLW), Marriott Hotel, Goa, India, U.S. Chemical and Pharmaceutical Patent Law
September 12, 2007, Interphex and Indian Pharmaceutical Association (IPA), Bombay Exhibition Center, Mumbai, India, Sustaining a Competitive Advantage in the U.S. for Indian Generic Pharmaceutical Companies
September 11 and 13–14, 2007, Academy of Intellectual Property Studies (AIPS), Mumbai, India, U.S. Patent Protection for Pharmaceutical Inventions,” (half day seminar and two day workshop)
February 21, 2006, Schwegman, Lundberg, Woessner & Kluth (SLWK), Marriott Hotel, Goa, India, U.S. Chemical and Pharmaceutical Practice
October 18, 2005, Licensing Executives Society (LES) Annual Meeting, Phoenix, AZ, Ensuring Ownership of your Intellectual Property: Working with Consultants, Employees and Joint Developers
USPTO’s Green Technology Pilot for Environmentally Friendly Patents, Gary Speier and Nicholas Lanzatella, Tort Source - A Publication of the Tort Trial & Insurance Practice Section, Vol. 13, No. 2, pp.1 and 4 (Winter 2011).
U.S. Patent No. 5,843,905. Peptidic phosphinyloxymethyl ketones as interleukin–1 ß –converting enzyme inhibitors, Singh; Jasbir; Dolle; Roland E.; and Speier; Gary.
U.S. Patent No. 5,585,486. Peptidic ketones as interleukin–1 ß –converting enzyme inhibitors, Dolle; Roland E.; Graybill; Todd L.; Speier; Gary J.; Prouty; Catherine P.; and Schmidt; Stanley J.
U.S. Patent No. 5,462,939. Peptidic ketones as interleukin–1 ß –converting enzyme inhibitors, Dolle; Roland E.; Graybill; Todd L.; Speier; Gary J.; Prouty; Catherine P.; and Schmidt; Stanley J.
Oxidative Intramolecular Cyclization of Diketoximes: Synthesis of 1,5–Dinitro–cis–bicyclo[3.3.0]octane. Zajac, W.; Speier, G.; Buzby, J.; Walters, T.; J. Org. Chem. 61. 3545–3547, 1996.
Aspartyl alpha–((diphenylphosphinyl)oxy)methyl ketones as novel inhibitors of interleukin–1 beta converting enzyme. Utility of the diphenylphosphinic acid leaving group for the inhibition of cysteine proteases. J Med. Chem. 1995 Jan 20; 38(2):220–2. Dolle RE, Singh J, Whipple D, Osifo IK, Speier G, Graybill TL, Gregory JS, Harris AL, Helaszek CT, Miller RE.
α–((Tetronoyl)oxy)– and α–((tetramoyl)oxy)methyl ketone inhibitors of the interleukin–1β converting enzyme (ICE) Bioorganic & Medicinal Chemistry Letters, Vol: 7, Issue: 1, January 7, 1997 pp. 41–46. Graybill, Todd L.; Prouty, Catherine P.; Speier, Gary J.; Hoyer, Denton; Dolle, Roland E.; et. Al.
Pyridazinodiazepines as a high–affinity, P2–P3 peptidomimetic class of interleukin–1 beta–converting enzyme inhibitor. J Med. Chem. 1997 Jun 20;40(13):1941–6. Dolle RE, Prasad CV, Prouty CP, Salvino JM, Awad MM, Schmidt SJ, Hoyer D, Ross TM, Graybill TL, Speier GJ, Uhl J, Miller BE, Helaszek CT, Ator MA.
U.S. 7,883,680 Method for purifying silicon
U.S. 7,892,326 Air-permeable filtration media and related systems
U.S. 7,803,842 Choline Esters Useful for the Treatment of Cognitive Dysfunctions and Enhancement of Memory, Learning and Cognition
U.S. 7,727,503 Method for purifying silicon
U.S. 7,709,055 Polymers with ether containing side chains and compositions thereof
U.S. 7,485,286 Termite resistant and fungal resistant oriented strand board and methods for manufacturing
U.S. 7,467,482 Method for lyophilizing an active agent
U.S. 7,416,581 Air-permeable filtration media, methods of manufacture and methods of use
U.S. 7,410,958 Triterpene quaternary salts as biologically active surfactants
U.S. 7,404,918 Wood-based product treated with silicone-containing material and dianion, and methods of making the same
U.S. 7,378,044 Method for Manufacturing Wood–Based Composite Panel Having Foil Overlay
U.S. 7,288,265 Treating Viral Infection at Smallpox Vaccination Site
U.S. 7,264,796 Termite resistant and fungal resistant oriented strand board and methods for manufacturing
U.S. 7,264,184 Birch bark processing and the isolation of natural products from birch bark
U.S. 7,253,294 Isolation of Lutein from Alfalfa
U.S. 7,220,727 Aminoglycosides as Antibiotics
U.S. 7,199,114 Triterpene Quaternary Salts as Biologically Active Surfactants
U.S. 7,198,808 Process for Extracting Compounds from Plants
U.S. 7,144,917 Inhibitors of Matrix Metalloproteinases
U.S. 7,144,875 Methods of treating fungal infections using lupeol
U.S. 7,135,444 Cleaning composition useful in semiconductor integrated circuit fabrication
U.S. 7,109,361 Isolation of Lutein from Alfalfa
U.S. 7,087,561 Cleaning composition useful in semiconductor integrated circuit fabrication
U.S. 7,067,466 Cleaning composition useful in semiconductor integrated circuit fabrication
U.S. 7,067,465 Cleaning composition useful in semiconductor integrated circuit fabrication
U.S. 7,408,018 Elastomeric functional biodegradable copolyester amides and copolyester urethanes
U.S. 7,507,749 Antitumor agents
U.S. 7,470,788 Antitumor agents
U.S. 7,304,122 Elastomeric functional biodegradable copolyester amides and copolyester urethanes
U.S. 7,241,894 Antitumor agents
U.S. 7,220,727 Aminoglycosides as antibiotics
U.S. 7,040,706 Seat and method of making same
U.S. 7,144,917 Inhibitors of matrix metalloproteinases
U.S. 7,109,341 Therapeutic amides
U.S. 7,018,561 Product Stability Enhancement with Phosphonium Salts
U.S. 6,951,847 Methods of treating fungal infections using lupeol
U.S. 6,907,679 Method for lyophilizing an active agent
U.S. 6,876,219 Antitumor agents
U.S. 6,867,314 Methods of manufacturing betulinic acid
U.S. 6,831,047 Cleaning composition useful in semiconductor integrated circuit fabrication
U.S. 6,830,758 Psoriasis patch
U.S. 6,818,676 Foam cushion and method of manufacturing the same
U.S. 6,818,317 Termite resistant and fungal resistant oriented strand board and methods for manufacturing
U.S. 6,815,553 Birch bark processing and the isolation of natural products from birch bark
U.S. 6,800,352 Wood–based composite panel having foil overlay and methods for manufacturing
U.S. 6,773,714 Polymeric delivery formulations of leuprolide with improved efficacy
U.S. 6,768,016 Isolation of natural products from birch bark
U.S. 6,750,296 Polymer material with stable non–wetting surface
U.S. 6,722,054 Process and delivery container for lyophilizing active agent
U.S. 6,703,415 Inhibitors of matrix metallaproteinases
U.S. 6,689,767 Triterpenes having antibacterial activity
U.S. 6,642,217 Triterpenes having human antifungal and antiyeast activity
U.S. 6,634,575 Birch bark processing and the isolation of natural products from birch bark
U.S. 6,626,870 Stoppering Method to Maintain Sterility
U.S. 6,613,727 Stabilized oxalic acid sour
U.S. 6,610,252 System for use in lyophilization comprising delivery containers and a cover plate
U.S. 6,566,144 Cover plate for use in lyophilization
U.S. 6,503,875 Stabilized oxalic acid sour
U.S. 6,503,538 Elastomeric functional biodegradable copolyester amides and copolyester urethanes
U.S. 6,495,158 Acne patch
U.S. 6,486,108 Cleaning composition useful in semiconductor integrated circuit fabrication
U.S. 6,469,227 Antipruritic patch
U.S. 6,407,270 Methods for manufacturing betulinic acid
U.S. 6,392,070 Birch bark processing and the isolation of natural products from birch bark
U.S. 6,369,101 Therapeutic method to treat herpes virus infection
U.S. 6,271,405 Method for manufacturing betulinic acid
U.S. 6,239,142 4–oxo–4,7–dihydro–thieno[2,3–b]pyridine–5–carboxamides as antiviral agents
U.S. 6,232,481 Method for manufacturing betulinic acid
U.S. 6,218,349 Composition suitable for removing proteinaceous material
U.S. 6,211,355 Radionuclide labeling of vitamin B12 and coenzymes thereof
U.S. 6,113,877 Sigma–2 receptors as biomarkers of tumor cell proliferation
U.S. 6,096,290 Radionuclide labeling of vitamin B12 and coenzymes thereof
