Troy A. Groetken

Troy A. Groetken, Shareholder
Email. tgroetken@mcandrews-ip.com
Tel. (312) 775-8259
Practice Areas: Global Intellectual Property Portfolio Analysis, Counseling & Management; Complex Chemical, Small-molecule Pharmaceutical, and Biotechnological Patent Prosecution; Intellectual Property Acquisition, Divestiture, and Licensing; Clearance, Freedom to Operate & Invalidity Opinions; Trademark Prosecution; Antitrust; Intellectual Property Landscaping

Education: Drake University, College of Pharmacy, B.S., Pharmacy, cum laude, Rho Chi, 1994Drake University Law School, J.D., cum laude, 1997John Marshall Law School, LL.M., Intellectual Property Law, with Honors, 1998

Bar Admissions: Admitted to practice in Illinois and Iowa. Member of the bars of the United States Supreme Court, Federal Circuit Court of Appeals, and District Courts for the Northern District of Illinois and the Southern District of Iowa. Registered to practice before the U.S. Patent and Trademark Office. Registration Certificate (Roll of Patent Agents), Canadian Patent Office.

Pharmaceutical Admissions: Registered, licensed pharmacist in Illinois, Iowa and Michigan.

Professional Experience: Troy Groetken is a Shareholder, Board Member, and Executive Committee member with McAndrews. He has approximately 25 years of legal experience in the intellectual property field and more than 25 years of technical experience in the pharmaceutical, biotechnological, and chemical fields. He is recognized in the IAM Patent 1000: The World’s Leading Patent Professionals, and has been listed as one of the Best Lawyers in America since 2012.

As a registered U.S. patent attorney, Troy regularly counsels and is known globally as a "go-to" intellectual property attorney for Fortune 100 and 500 clients regarding complex intellectual property matters involving strategic global patent portfolio development, implementation, and enforcement. This is especially the case for matters impacted by recent changes caused by the AIA and ANDA/ABLA regulatory schemas. Troy also advises upon and institutes multi-level, front-end and back-end licensing programs coordinated with a client-focused business modeling approach including acquisition, divestiture, platform positioning and the like. In addition, he strategically addresses multi-jurisdictional intellectual property integration issues, ranging from core and non-core patent portfolio due diligence analysis to global portfolio coordination matters (e.g., coordination of complex U.S. reexamination or reissue proceedings with European, Asian and Australian appeals and opposition).

Troy focuses on a broad range of technical disciplines in the chemical, pharmaceutical, and biotechnological arts. Areas include new drug entities (small-molecule, protein, recombinant, combinatorial technologies, assay, etc.), assays, immunoassays, biological molecular technologies, API development and positioning, generic pharmaceuticals, biosimilars, pharmaceutical conjugates, surfactant technologies, agricultural compositions, food-based technologies, animal compositions, gellants, polyols, lubricants, coatings, elastomers, sealants, adhesives, biocides, medical devices, drug delivery formulations, laundry and cleaning products, inorganic and organic synthesis products, pharmaceutical supplements, personal care and cosmetic formulations, oil and gas technologies, alternative fuels, fuel cells, and renewable energies, among others.

He also regularly counsels Fortune 100 mechanical and electrical companies with respect to intellectual property matters ranging from heavy-duty industrial products (e.g., diesel engines and aircraft technologies) to small appliances.

Prior to practicing patent law, Troy worked as a clinical consultant pharmacist, supervised drug research programs in coordination with the FDA, evaluated drug-management protocols, and performed drug-treatment trials on behalf of various hospitals and research institutions.

PUBLICATIONS SAMPLING:

Featured in How Can Firms Avoid Falling Into GSK-Teva ‘Skinny Label’ Trap?, Generics Bulletin, September 6, 2021.

Quoted in Arthrex Ruling Leaves Attys Eyeing USPTO for Guidance, Law360, June 21, 2021.

A Conversation with Troy Groetken and Outsourced Pharma about What Happens When IP is Redistributed? CDMOs Without Borders, May 24, 2021.

Quoted in Did You Vote To Give Your IP Away?, Outsourced Pharma, May 19, 2021.

Featured in Why focusing on the quantity of pharma innovation is misleading, Drug Discovery & Development, February 23, 2021.

Featured in Why Big Tech is offering Biden help with COVID-19 vaccination, Pharmaceutical Processing World, February 17, 2021.

Three cases that changed the patent disclosure landscape of proteins, Drug Discovery & Development, December 15, 2020.

The Critical Importance of Patent Protection for Diagnostics in the COVID-19 Era, MDDI, November 19, 2020.

Rethinking the Way We Patent Diagnostics, IP Watchdog, August 13, 2020.

Thought Leader: Troy Groetken on Patents, www.lawyer-monthly.com, LM77-16, p. 87, October 4, 2016.

Inter Partes Review, Development and Procedures, Today’s General Counsel, Vol. 12, No. 1, Feb/Mar 2015.

An alternative litigation strategy: ADR + IPR, Insidecounsel.com, March 26, 2014.

Should the Supreme Court address claim construction in patent cases?, Insidecounsel.com, March 12, 2014.

Sufficiency of disclosure and the great divide between the U.S. and Europe, Insidecounsel.com, February 26, 2014.

The perfect storm that led to the rise of design patents, Insidecounsel.com, February 12, 2014.

Can personalized medicine survive Prometheus?, Insidecounsel.com, January 29, 2014.

Is Patent Reform, Round II a bad idea?, Insidecounsel.com, January 15, 2014.

REPRESENTATIVE SPEAKING ENGAGEMENTS:

Moderator, Out of Monumental Challenges Come Substantial IP Opportunities, Consero’s IP Virtual Forum for Life Sciences, December 7, 2021

Moderator, Trade Secret Programs: From Setup to Enforcement, Consero’s IP Virtual Forum for Life Sciences, December 5, 2021

Panel Leader, Navigating the Life Sciences IP Landscape, IPBC Connect Life Sciences Panel, September 29, 2021

Presenter, Inflection Point: IP Innovation, Collaboration, and Enforcement at this Stage of the Pandemic, Association of Medical Diagnostic Manufacturers (AMDM) Quarterly IVD Diagnostics Sector, June 22, 2021

Moderator, Lessons from COVID on Innovation, Collaboration & Enforcement, BIO Digital 2021, June 15, 2021

Moderator, Discussing the Regulatory Climate in Light of the Pandemic, Consero’s IP Virtual Forum for Life Sciences, June 7, 2021

Looking Beyond the Pandemic, January 27, 2021

Event Founder/Director, Sixth Annual Symposium on IP, Critical Updates Into The Ever-Changing Landscape of Patentability, and Patent Enforcement, McAndrews, Held & Malloy, Ltd, September 29, 2016; Moderator, Practical Insights Regarding IPR and PGR Practice

Best Practices: PGR Procedures, U.S. and Foreign Venues – 2016

Event Founder/Director, Fifth Annual Symposium on IP, Practical Insights Into The Ever-Changing Landscape of Patentability and Patent Enforcement, McAndrews, Held & Malloy, Ltd, June 11, 2015

Strategic U.S. Patent Portfolio Development, IP Management Seminar, ZSP Patentanwälte PartG mbB, Munich, Germany, March 19, 2015

Best Practices Regardi