Karen L. Kimble
Technology Law, PLLC
3595 North Sunset Way
Sanford, MI 48657
techlaw@tm.net
Phone: (989) 687-7401
Fax: (989) 687-7403
Cell: (989) 859-3085
Professional Credentials:
Member of the Michigan bar since August 1985
Member of the Indiana bar since May 1980
(presently inactive status; can be changed to active)
USPTO bar (1973 as agent and 1980 as attorney)
Court of Appeals for the Federal Circuit (CAFC) since February 1983
United States District Court Eastern District of Michigan since June 1986
United States District Court Southern District of Indiana since May 1980
Experience:
General: Has 40 years of a broad range of IP experience with working
knowledge of 125+ countries IP laws and patent use. Additionally, has
specific expertise in treaties relevant to Intellectual Property. Has written
numerous agreements, e.g., JDA, licensing agreements, complex
collaborative research arrangements, due diligence for mergers and
patent purchases, and “red herring” documents for IPO. Of course, has
done research agreements, CDA/NDA and other related
patent/technology agreements globally.
Technical Expertise: Focus on Chemistry and Pharmaceutical Areas
including organic chemistry, small molecule pharmaceutical moieties,
biochemistry, medicinal chemistry, and limited biotechnology, including
plant based pharmaceutical efforts, various chemical products that are
non-pharmaceutical and simple devices for medical or plant uses. Has
expertise in agricultural patents and plant patents. Also some grant work
resulting from NIH, DOD, DOE and small business development through
State of Michigan initiatives.
Employment History:
Technology Law, PLLC
President
Sanford, MI
2004-present
Began own law firm specializing in
technology licensing, variety of chemical
patent drafting and prosecution, and trademarks.
Helps clients “do a deal” and due diligence.
Many agreement types are provided for clients.
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Karen L. Kimble
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MSU College of Law
East Lansing, MI
Adjunct Professor
2005-present
Teaching both (a) an advanced intellectual
property course – Advanced Patent Law
and (b) Licensing with international concerns
for junior/senior students and LLM/MJ programs.
The Dow Chemical Company
Midland, MI
Senior Counsel
1985-2004
Lead attorney in the pharmaceutical/biotechnology group and pharmaceutical group.
Responsible for biopharma for small molecules
(organic entities), proteins (enzymes, antibodies),
radioactive chelants, dendrimers, dendritic polymers,
vaccines and oleo chemistry areas.
Drafted many major licensing arrangements and research
collaborations with multiple parties as well as simple
research, consulting, material transfer and CDA
agreements. Was responsible for oversight and
direction of related oppositions and interferences,
and related litigation. Did US and international issues
and trained others.
Eli Lilly and Company
Indianapolis, IN
Patent Attorney
1975-1985
Responsible for prostaglandins,
ergolines, vinca alkaloids, cephalexin and
cephalosporin, oncology areas, and other
organic synthetic molecules, and insulin (animal and human
recombinant- Humulin™). Also some
work in fungicides and herbicides.
International patent approach used.
G.D. Searle & Company
Patent Agent
Worked on aspartame (junior), steroids,
estrogens, contraceptives, IUDs,
prostaglandins, cardiac and gastrointestinal
areas as an international approach and
wrote the training manual for such practice
for the company.
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Skokie, IL
1970-1975
Karen L. Kimble
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Educational Background:
Indiana University (IUPUI)
Juris Doctorate
Indianapolis, IN
1975-1980
University of Illinois
PhD Biochemistry
(Completed all requisite course work
but not thesis)
Chicago, IL
1967-1969
Purdue University
M.S. Chemistry (emphasis in biochemistry)
Laboratory Teaching Assistant
West Lafayette, IN
1965-1967
St. Cloud State University
St. Cloud, MN
B.A. Chemistry
1961-1965
Minors in Mathematics and Zoology
Awards: Outstanding Senior – Chemist
Associate Professor in Chem 101 Senior Year
Significant Patents obtained:
U.S. Patent 5,527,524 (commercial product)
U.S. Patent 5,714,166
US Patent 7,893,289
US Patent 5,338,532
US Pub. Appln. 2011/0073802
US Pub. Appln. 2010/0019169
US Pub. Appln. 2010/0104918
US Pub. Appln. 2011/0054137
US Pub. Appln. 2011/0012074
Many others from all employers (name does not appear)
Speaker:
MSU College of Law
September 13, 2004
Panel on biotechnology and pharmaceutical issues
Michigan State University (MSU)
Each July (15+ years)
Trainer - IPR transfer and GAT/TRIPs to interns from developing
countries (last July 2007) and scheduled for July 2008 to assume
responsibilities for the law students also taking the course and adding on
time to teach PCT use
AIPLA:
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Speaker/Panelist – (5+ conferences) on a variety of topics – PCT
claim drafting, strategy for using PCT, and management of IP within a
large corporation
MI State Bar for IP:
Speaker – (4+ conferences) how to effectively use PCT
MN State bar:
Speaker – PCT claim drafting and use of filing techniques
Memberships:
AIPLA –Licensing, international law, PCT, chemical practice and
biotechnology, alternative dispute resolution
Michigan State bar – Intellectual Property Section
ACS – 1962 on
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