Steve Parmelee heads the Life Sciences Practice Group at COJK. He brings over 25 years of strategic patent preparation and prosecution experience to his clients’ matters. He has extensive expertise in biotechnology, especially vaccines, pharmaceuticals, diagnostics and immunotherapies. Steve counsels clients on issues surrounding the recently enacted America Invents Acts (AIA), including transitioning from first-to-invent to the new first-inventor-to-file system. In addition, Steve has a lengthy and successful track record of handling inter partes patent disputes at the US Patent and Trademark Office (USPTO), particularly patent interferences. This experience will be invaluable as clients consider the six different types of post-grant or inter partes proceedings permitted under the AIA.
Steve also advises clients on freedom-to-operate issues, and with due diligence concerns prior to licensing, investments or acquisitions. He has worked extensively on client patent portfolios in the areas of immunology, molecular biology, and infectious disease. He obtained patent protection for a client’s licensee’s immunotherapy product with sales over $1.2 billion per year, generating substantial royalties for the client. Representative client technologies include patents in HIV diagnostics and therapeutics, phage display, medical devices, cytokines, adoptive immunotherapies, adjuvant formulations, genes encoding G-protein coupled receptors, recombinant vaccines for influenza, respiratory syncytial virus, and rotavirus, Pichia expression systems, coagulation factors, tumor antigens, antisense modification of cell cycles, antibody technology, and platform technologies for diagnosis of infectious diseases and cancer.
A large part of Steve’s work has been post-grant proceedings at the Patent Trial and Appeal Board (PTAB) of the USPTO. He has acted as lead counsel in many patent interferences at the Board, covering a wide range of technologies. For example, Steve represented the prevailing party at the Board in establishing the now standard “two-way test” for declaring interferences, University of Washington v. Eli Lilly & Co. In another notable case, Steve represented the prevailing party in a gene array dispute at the Board, Affymetrix v. Incyte. Other representative technologies he has successfully handled in inter partes disputes at the Board include medical devices, recombinant cytokines, monoclonal antibodies, recombinant HIV nucleotides and proteins. Outside of life sciences he has successfully conducted interferences involving photolithographic methods for producing micro-optics, wireless security protocols, magnetic high density recording media, and others. With the introduction of four new proceedings before the PTAB by the AIA: Post-Grant Review, Inter Partes Review, Business Method Patents, and Derivation Proceedings, in addition to Patent Interferences, Steve’s experience as lead counsel in many patent interferences will provide clients with a unique advantage when faced with these new post-grant proceedings.
Steve has served as in-house Patent Counsel for Genetic Systems Corporation, a pioneering Seattle biotechnology company, and for Bristol-Myers Squibb Company, a multinational pharmaceutical company. Based on these experiences Steve understands the pressures and expectations of corporate counsel, and this insight allows him to work successfully with a variety of life sciences companies and institutions.
Prior to joining COJK, Steve was an equity partner at a national intellectual property law firm, joining its Palo Alto Office in 1988 and founding its Seattle Office in 1990. Steve served as the managing partner of the Seattle office through 2008.
Education
- J.D., University of Denver, 1984
- M.S., Medical Microbiology, Creighton University, 1980
- B.A., Zoology (Microbiology/Immunology emphasis), University of Washington, 1976
Professional Experience
- Christensen O'Connor Johnson KindnessPLLC, Seattle, WA
Member, 2010 to present - Townsend and Townsend and Crew LLP, 1988-2010
Palo Alto, CA, 1988-1989
Founded Seattle Office, 1990; Managing Partner, Seattle, 1990-2008 - Genetic Systems Corporation and Bristol-Myers Squibb Company, Seattle, WA
Patent Counsel, 1985-1988
Scientific Experience
- Research Associate, Infectious Disease, Children's Hospital Colorado, Denver, Colorado 1979-1981
- Research Associate, Department of Microbiology, University of Colorado Health Sciences Center, Denver, Colorado, 1981-1982
Bar & Court Admissions
- State Bar of Washington, 1985
- United States Patent and Trademark Office, 1985
- United States District Court for the Western District of Washington
- United States Court of Appeals for the Federal Circuit