Biography

Thomas J. Wrona, Ph.D. draws on eighteen years of biotechnology intellectual property experience to provide counsel for a range of clients. Dr. Wrona rejoined the Firm in 2015 after nearly a decade in the Intellectual Property group at Amgen Inc. There he gained extensive experience conducting intellectual property due diligence and counseling corporate leadership on the intellectual property opportunities and risks associated with numerous in-licensing, partnership, and M&A opportunities. He also led the legal team responsible for analyzing the freedom-to-operate issues and for protecting the intellectual property created within the protein engineering, process development, device, and diagnostic groups. He has experience managing and maintaining an extensive foreign and domestic prosecution docket, analyzing potential freedom-to-operate issues, and developing and implementing legal strategies supporting pre-clinical, clinical, and marketed therapeutic molecules.

Education

  • The John Marshall Law School (J.D., cum laude)
  • University of Texas at Austin (Ph.D.)
    • Microbiology
  • University of Illinois, Urbana-Champaign (B.S.)
    • Microbiology

Bar Admissions

  • Illinois
  • U.S. Patent and Trademark Office

Representative Experience

  • Prepared and prosecuted patent applications associated with a wide range of biotechnologies including those relating to diagnostic and therapeutic antibodies, therapeutic antisense molecules, antibody engineering, oncolytic viruses, growth factors, DNA sequencing-by-hybridization, and diagnostic assays.
  • Developed and implemented legal strategy for inter partes proceedings, including European Opposition proceedings and U.S. Interference proceedings.
  • Led intellectual property due diligence for Amgen Inc. in a multi-targeted collaboration to develop T-cell therapeutics.
  • Served as intellectual property due diligence lead for a collaboration agreement between Amgen Inc. and an international biotechnology company to research and develop bi-specific antibodies, along with the due diligence associated with the eventual acquisition of the company by Amgen. Acted as the intellectual property integration lead following the acquisition.

Background and Credentials

Dr. Wrona has assisted his clients with domestic and foreign intellectual property protection, inter partes proceedings, and freedom-to-operate and patentability analysis and opinions. He has provided IP analysis and counseling in support of dozens of licensing, partnership, and M&A biopharma opportunities. As part of the development team of many pre-clinical, clinical, and marketed products, he appreciates the complexities, risks, and difficult decisions (scientific, commercial, and legal) associated with bringing an invention to market.

He received his J.D. from The John Marshall Law School earning a Certificate of Intellectual Property Law. While there, he was a founding editor of the Review of Intellectual Property Law. Prior to entering intellectual property law, Dr. Wrona earned his Ph.D. in Microbiology at the University of Texas at Austin studying the pathogenesis and immunomodulatory effects of an oncogenic retrovirus. During his undergraduate studies at the University of Illinois, his research focused on bacterial pathogenesis.

Publications and Presentations

  • "A Step Forward for Biotechnology Patent Law: The Capon Case Reveals the Reasonable Artisan," Genetic Engineering News, Vol. 25, No. 17, October 2005, Wrona and Silvert.

Community and Professional Involvement

  • The John Marshall Law School Intellectual Property Advisory Board
  • The Boys & Girls Club of King County, Mercer Island Branch, Advisory Board (2012-2014)

Representative Matters

Barton v. Fischoff* (Monsanto) v. Adang (Mycogen Plant Sciences)
U.S. Patent Office Board of Patent Appeals and Interferences
Patent Interference
Biotechnology

Amgen Inc.* v. Human Genome Sciences, Inc. (Schering)
U.S. Patent Office Board of Patent Appeals and Interferences
Patent Interference
Biotechnology