Sarah D. Eddy, PhD

Associate
Norton Rose Fulbright US LLP

Austin
United States
T:+1 512 536 5267
Austin
United States
T:+1 512 536 5267
Sarah D. Eddy, PhD

Sarah D. Eddy, PhD

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Biography

Sarah Eddy, PhD, focuses her practice on intellectual property and patent prosecution. Her doctoral biochemistry and molecular biology research experience involving biological macromolecules and enzymes provides a solid basis for drafting and prosecuting life science patent applications before the US Patent and Trademark Office (USPTO) and supervising patent prosecution before many foreign patent offices related to a variety of disciplines, including molecular biology, microbiology, biochemistry and chemical engineering. She has specific experience prosecuting life science patent applications concerning pharmaceutical, gene and immunotherapies, as well as medical diagnostics and devices. She counsels clients regarding intellectual property portfolio development, management and commercialization on a global scale.

In addition to her prosecution work, Sarah routinely drafts and reviews technology transfer documents, including licensing, confidentiality and material transfer agreements. She also prepares pre-litigation, infringement, validity, patentability and freedom to operate (FTO) opinions, and she regularly performs intellectual property due diligence for companies and investors.

Professional experience

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JD, cum laude, Indiana University Maurer School of Law, 2019
PhD, with honors, Interdisciplinary Biomedical Sciences, University of Arkansas for Medical Sciences, 2016
BA, cum laude with distinction, Biology, Hendrix College, 2011

  • Texas State Bar
  • US Patent and Trademark Attorney
  • Preparing patent applications, responses to office actions, appeal briefs, examiner interviews and a variety of other related prosecution matters
  • Lead counsel in appeal proceeding before the USPTO
  • Co-counsel in reexamination proceedings before the USPTO
  • Formulate strategies for prosecuting patent applications in foreign jurisdictions and supervise execution of those strategies
  • Strategic portfolio development and management for small, medium and large companies and universities
  • Perform IP review and clearance during and after product development
  • Monitor, maintain and manage a company's patent portfolio
  • Perform due diligence for clients looking to acquire or sell intellectual property
  • Co-author, "Obviousness-type double patenting: Best IP practices for international practitioners in view of In re: Cellect, LLC," International Federation of Intellectual Property Attorneys, November 2023
  • Co-author, "Obviousness-type double patenting, terminal disclaimers and best IP practices," Norton Rose Fulbright, September 2023
  • Co-author, "Full scope enablement in functional limitation claims: Supreme Court grants Amgen's petition for certiorari," Norton Rose Fulbright, November 2022
  • Co-author, "Global patents comparative law guide: Sufficiency of disclosure," Norton Rose Fulbright, April 2022
  • Co-author, "New linkages and extensions strengthen chains binding China's patent law: Implications for patent and regulatory approval filing strategies in China, US and Canada," Norton Rose Fulbright, February 2021

"The unexpected path from proteins to patents & some lessons learned along the way," 10th Annual Arkansas Undergraduate Summer Research Symposium, University of Arkansas for Medical Sciences, Little Rock, AR, July 26, 2023

  • American Intellectual Property Law Association
  • Austin Intellectual Property Law Association
  • The Honorable Lee Yeakel IP American Inn of Court

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