Lori-Ann Johnson

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Lori Johnson focuses on client counseling where she assists clients with the value management of their portfolios.  She helps companies understand the legal and commercial significance of their intellectual property and assists in aligning their IP portfolios to meet their business objectives.  She has more than 30 years of experience in the areas of patentability and portfolio establishment, landscape analysis, due diligence, including acquisition, freedom to operate, new product launch, and pre-litigation analysis in the chemical area.  She has significant experience in all phases of utility and design patent preparation and prosecution, infringement, validity and patentability opinion preparation , reissue and reexamination practice, post Grant proceeding including IPR and PGR before the Patent Trial and Appeal Board (PTAB), and licensing.


Ms. Johnson’s technical experience is diverse and involves chemical and mechanical subject matter such as consumer products, pharmaceuticals, paper making, cosmetics, industrial chemical, beverage compositions, photochemistry, glass making and medical devices.  She has worked with such companies as Georgia Pacific, Coca Cola, L’Oreal, Sanofi-Aventis, and Polymer Group Inc.


Ms. Johnson routinely lectures in both the United States and Europe on all aspects of the protection and enforcement of U.S. intellectual property rights, including chemical patent practice, freedom to operate, due diligence, acquisition and landscaper analysis, and licensing.  Ms. Johnson spent 6 years in Europe managing the European headquarters for her prior employer Finnegan.

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Highlights

  • Worked as a patent examiner at the USPTO, 1986-1990
  • Designated as a certified Patent Valuation Analyst (CPVA)
  • Guest lecturer in the European and Norwegian Patent Offices
  • Handled a Section 145 Action after an adverse decision from the Patent Trial and Appeals Board.
  • Led team in a pre-purchase due diligence before acquisition of a $250 Million dollar product line
  • Assisted client Rambus with due diligence in their $342 Million dollar acquisition of Cryptographo Research.


Professional Affiliations

  • Member of the Patent Bar
  • AIPLA, American Intellectual Property Association
  • AIPPI, International Intellectual Property Association
  • American Bar Association
  • DC Bar Association
  • Virginia Bar Association
  • TAPPI

Publications


Challenging the Fundamentals of Administrative Review in the Patent System, Daily Report, January 2018.


The Proliferation of Patent Boxes, The Intellectual Property Strategist, March 2016.


U.S. Innovation Box May Reverse Issues Raised by Foreign Patent Boxes, IP Frontline, October 2015.


Trade Secrets: The Last Minute Asset in M& A Transactions, By Lori-Ann Johnson and Barry D. Biddle, Association of Corporate Counsel Magaine, September 2015.


Atlanta Companies to Benefit from U.S. Entry into Hague Agreement, Global Atlanta, March 2015.


A Confidentially Protected Offer or Sale is Little Protection at All, Inside Counsel, December 2014.


Confidential Disclosure is the only safe Disclosure, Inside Counsel, November 2014.


The Basics of post-AIA Disclosure: What to tell your sales force, Inside Counsel, October 2014.

Seminars and Presentations

IP Due Diligence, Norwegian Patent Office, May 2017.


Freedom to Operate, Norwegian Patent Office, March 2017