Gregory J. Carlin
Principal
404-645-7705
gcarlin@m2IPlaw.com
Mr. Carlin brings deep technical and legal expertise as a biomechanical engineer, medical researcher and in-house corporate counsel to a global medical device company to the service of clients in the medical technology industry. Informed by his experience as an in-house attorney, he brings a practical, business-focused perspective to patent prosecution, IP transactions, licensing and agreements and trademark prosecution. Mr. Carlin frequently advises corporate officers, product managers, boards of directors, business development executives and research engineers on strategic approaches to product clearance, research and development and portfolio management.
Mr. Carlin also has experience in performing IP due diligence for a range of mergers and acquisitions, excelling at identifying salient deal points and conveying a weighted understanding of the relevant IP issues to business development executives. He also prepares agreements associated with mergers and acquisitions, including complex, multi-staged collaboration, confidentiality, transfer, in-licensing and out-licensing agreements.
Mr. Carlin is a primary contributor to AdvaMed’s efforts to protect the interests of medical technology companies by lobbying Congress on the Patent Reform Bill. He has also contributed to an amicus brief on In re Bilski on behalf of AdvaMed, addressing the needs of medical device software developers.
His medical and biotechnology experience includes orthopedics, including implants and soft tissues, vascular and non-vascular stents, critical care monitoring including hemodynamic and blood analyte monitoring, cardiac surgical tools and devices, including robot interfacing minimally invasive surgical tools and catheter delivered heart valves as well as manufacturing systems for large scale production of biological materials for biotechnology therapeutics.
Mr. Carlin also assists clients with computer software applications, including a range of Internet-based business technologies and business method patents, particularly in the financial and logistics industries. He has written patents for electronic trading platforms, smart credit card operation clearing processes, electronic securitization processes, including those leveraged into trading systems, systems integrating funds, information and package flows to facilitate cross-border and other transactions.
His experience also extends to other mechanical, communications and computer technologies including packaging systems, box construction, computer architecture and computer programming, object oriented software, satellite propulsion technologies, tools for manufacturing aircraft, aircraft structures and aircraft control software, combustion systems, including turbo and superchargers, as well as cell phone handsets, including cell phone housings and display systems.
Memberships and Affiliations
Member, IP Working Group, Advanced Medical Technology Association (AdvaMed)
Member, Association of Corporate Counsel (ACC) 2007-2010
Member, Los Angeles Intellectual Property Law Association (LAIPLA)
Member, International Association for the Protection of Intellectual Property (AIPPI)
Board of Directors, ASIAM, a non-profit organization facilitating cross-cultural medical knowledge exchange between Asia and the Americas
Founding Member, Former Chair of the Economic Development and Lifesciences Committee, Health Services Council, Charlotte Chamber of Commerce
Publications and Presentations
“The Key to Prosecution Laches” Gregory J. Carlin and Kimberlynn B. Davis; J. of Intellectual Property Law; The U. of Georgia School of Law; Vol. 18; Spring 2011; No. 2; pp. 533 to 540.
Featured Panelist, “AdvaMed 2009: The MedTech Conference.” Washington, D.C., 2009.
Founding Editor, Rules of Patent Practice Update, a subscription-based email newsletter summarizing changes to USPTO policies and procedures.
Presenter, “Recent Proposed Rule Changes at the U.S. Patent and Trademark Office.” Harrison, Goddard and Foote (U.K.), 2006.
Presenter, “Introduction to the Intellectual Property Landscape.” Greensboro Chamber of Commerce, 2005.
Author, “Sorting Out Inventors and Patent Rights: A profit-maximizing strategy for establishing patent ownership cuts out unnecessary royalty payments.” MX Magazine, December 2004.
Presenter, “Sword or Shield: Intellectual Property in Academia.” University of Pittsburgh Musculoskeletal Center faculty, 2001.
Chapter Co-Author: Anatomy and biomechanics of the human posterior cruciate ligament. Clinical Biomechanics and Related Research 1:200-214, 1995.
Author or Co-Author of 15 original scientific research publications in the orthopedics field.
Prior Experience
Senior Intellectual Property Counsel, Edwards Lifesciences
Attorney, Alston & Bird, LLP
Law Clerk, Banner & Witcoff, Ltd
Laboratory Supervisor, Research Engineer, Musculoskeletal Research Center, University of Pittsburgh
Services
Patent Prosecution
Product Clearance
Strategic Product Research and Development
Portfolio Management
IP Transactions
IP Licensing and Agreements
Trademarks
Technologies
Medical Devices
Computer Software
Financial Systems
Communications
Transportation and Logistics
Aerospace
Automotive
Admissions
Georgia
North Carolina
United States Patent and Trademark Office
Education
B.S. University of Pittsburgh
Mechanical Engineering
M.S. University of Pittsburgh
Biomechanical Engineering
J.D. The George Washington University