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: Mr. Groetken is a Board Member/Shareholder with McAndrews, Held & Malloy. He is also a consultant clinical pharmacist registered and licensed in Illinois, Iowa and Michigan. Mr. Groetken has approximately 15 years of experience in the intellectual property field and over 20 years of experience in the pharmaceutical, biotechnological and chemical fields. As a registered U.S. patent practitioner, Troy regularly counsels international and Fortune 100 and 500 clients regarding advanced patent litigation and procurement matters; advises upon global licensing issues coordinated with client-centered business modeling and approaches; analyzes and addresses complex global intellectual property transactional issues, including due diligence analysis, valuation assessment, competitive landscape review, white space analysis, opinion development, and global portfolio management matters involving: chemical, pharmaceutical and biotechnological technological disciplines encompassing new drug (small-molecule, recombinant, combinational technologies, etc.) entities, API development, natural gas and diesel engine technologies, industrial buidling products, generic pharmaceuticals, biosimilars, pharmaceutical conjugates and combinatorials, surfactant technologies, agricultural compositions, food technologies, gellants, polyols, lubricants, coatings, laundry and cleaning products, inorganic and organic synthesis products, pharmaceutical supplements, personal care and cosmetic formulations, oil and gas technologies, alternative fuels, fuel cells, renewable energies, among others.
Troy also regularly counsels Fortune 100 mechanical and electrical companies with respect to litigation and global portfolio management matters ranging from heavy-duty industrial products to small appliances.
Prior to practicing patent law, Troy has worked as a clinical consultant pharmacist, supervised drug research programs, evaluated drug management protocols, and performed drug treatment trials on behalf of the FDA and various hospital and research institutions.
A Further U.S. Patent Reform Update and Practical Prosecution and Litigation Implications, February, 2012.
U.S. Patent Reform Bill Passes, Representing New Costs and Opportunities, The Rose Sheet, pgs. 10-12, September 26, 2011.
Using Patents As A Business Asset in Today's Economy, Life Science Leader, July 2011.
The Pendulum Swings Back: The Impact of Recent SCOTUS and Federal Circuit Cases, Northwestern Journal of Technology and Intellectual Property, Summer 2008, Vol. 6, No. 3.
Hard Times & Portfolio Management, Executive Counsel Magazine, October/November 2010, pp. 24-31.
Q&A With Troy A. Groetken, All Around the Water Cooler (Blog), October 18, 2010Former publisher for The Patent Lawyer magazine of The Association of Patent Law Firms (APLF), 2007-2009
REPRESENTATIVE SPEAKING ENGAGEMENTS:
U.S. Patent Reform: An Update, European Tour, February, 2012
U.S. Patent Law for European Patent Practitioners, U.S. and EPO Patent Law Update Symposium – Munich, 2006 - 2011
Polyol Competitive Landscapes – April 2006
Patent Prosecution Basics – May 2006
Strategic Management of Intellectual Property – February 2007
KSR Int’l Co. v. Teleflex Inc., - Practically Speaking What This Means To You, Association of Patent Law Firms (APLF) – May 11, 2007
U.S. Updates in Patent Law and USPTO Rules – September & November 2007
Proposed Rule Changes of the USPTO, U.S. and EPO Patent Law Update Symposium – Munich, September 20, 2007
Strategic Positioning of Intellectual Property, Chicago Intellectual Property Law Alliance (CIPLA) (Panelist) – 2007 - 2011
Recent Developments and Outcomes of U.S. Patent Case Law, Northwestern Law School (Panelist) – April 2008
Updates in U.S. Patent Law & Practical Tips to Consider in Response, IL Tech Summit – April 3, 2008
Recent Changes in Patent Law & Practical Implications of the MedImmune & Quanta Decisions, Licensing Executives Society – August 26, 2008, Chicago Bar Association IP Committee – September 18, 2008
Recent Court Decisions in Pharmaceutical and Chemical Patent Cases, U.S. and EPO Patent Law Update Symposium – Munich, September 23, 2008
Managing Clients – Billing Practices & Best Client Management Practices: The Good The Bad And The Ugly, Association of Patent Law Firms (APLF) – October 22, 2008
Protecting Global IP Assets – Practical Considerations for Cost-Effective Management of Globally Based Patent Portfolios, Association of Patent Law Firms (APLF) – February 11, 2009, Association of Patent Law Firms (APLF) – September 28, 2009
U.S. Enablement & Written Description Practice for European Practitioners, U.S. and EPO Patent Law Update Symposium – Munich, February 24, 2009
Global Portfolio Management & Cost Saving Strategies, Intellectual Property Law Association of Chicago (IPLAC) – January 13, 2010
Your Ethical Responsibilities – Lawyers Helping Lawyers, U.S. and EPO Patent Law Update Symposium – Munich, February 24, 2010
U.S. Patent Law Reform Update, Linus Pauling Biotech / Pharma Symposium – May 1, 2010
In-House Counsel on IP Portfolio Management in the Current Economic Conditions, Association of Patent Law Firms (APLF) – June 9, 2010
The Roles and Practical Outcomes of Patent Agents in Intellectual Property Law, Intellectual Property Law Association of Chicago (IPLAC) – May 18, 2010
Biosimilars Legislation in the U.S., U.S. and EPO Patent Law Update Symposium – Munich, May 3, 2011 KSR – Practical Approaches, American Intellectual Property Law Association (AIPLA) Roadshow – June 23, 2011