Michele Van Patten Frank
Michele's experience in both patent prosecution and counseling, combined with her diverse industry knowledge, offers her a unique perspective when prosecuting and obtaining patents for her clients. Recognizing that patents are a strategic investment for technology and life sciences companies, she builds meaningful patents that are mutually enforceable and valuable. Michele surrounds herself with a network of experts in technology fields that span the full spectrum of biotech, AI, software, and more, giving her in-depth, comprehensive knowledge of her clients' industries.
Michele is passionate about providing exceptional client service, which rewards both her and her clients with strong, long-lasting relationships. She also supports her clients with an integrated, cross-disciplinary legal approach, drawing on regulatory advisors, litigators, data privacy experts, employment lawyers, and tax advisors, to align with her clients' business strategies and goals.
She leverages her unique combination of government, transactional, and litigation IP experience to support her clients through all stages of the product life cycle. Her counseling experience encompasses bet-the-company patent portfolio strategies, lean early-stage mission-critical patent prosecution, and complex global patent portfolio prosecution and management. She also frequently works with clients through fundraising IP diligence, product clearance, licensing, and enforcement. She represents numerous companies in the healthcare industry, including those with medical device, orthopedic implant, smart contact lens, respiratory technology, ultrasonic periodontal system, medical diagnostic, and home healthcare monitoring system patents.
Michele has additional direct experience assisting organizations in the software engineering, consumer products, sporting goods, spectroscopy, optical disc, water desalination, telecommunications, and surveillance system sectors. She is adept at securing and defending patents covering business methods, Internet technology, data storage, global positioning systems, computer graphics, software (including clinical trial and research data software), electronic medical records, and superconductors. She also performs due diligence, assists with asset transfers, negotiates licensing and transaction issues, manages patent portfolios, and produces written counsel opinions.
Experience
Government Experience
- Patent Examiner, United States Patent and Trademark Office
Representative Matters
- Advised on various fitness technologies, including equipment, systems, and methods. The fitness equipment includes, for example, wearable hydration devices and exercise shoes. The systems and methods include real-time diagnostics and monitoring. In particular, these are used to diagnose traumatic brain injury and monitor a user’s exercise motions to determine concordance with exercise instruction
- Represented EMZ portfolio company FotoFinder Systems, Inc., a Germany-based global leader in skin imaging solutions, in connection with its acquisition of DermLite LLC, a U.S.-based handheld dermoscopy device company
- Led a California-based medical device company's patent strategy from inception through product development, culminating in a $25 million valuation; led patent diligence through funding rounds by investors, including two major venture capital firms; developed a fully integrated international patent strategy for the company's respiratory product, systems, and functionalities across multiple indications for use, to build protection for the commercial technology, and block infringers and design-around technologies
- Secured critical patents for a medical device company that deals with aneurysms and was seeking an attorney with combined patent examiner, prosecutor, and litigator experience to expedite applications stalled in the USPTO. Worked with the client and the USPTO to obtain valuable patents that cover the client’s inventive contributions, while maintaining strategic blocking coverage, and positioned the client to withstand the scrutiny of diligence and enforcement challenges
- Led U.S. product clearance, diligence, and patent portfolio development for European and Israeli medical device companies, including those in the areas of neurostimulation and stents. Advised on the timing of a U.S. product launch, supported the company through diligence and acquisition by U.S. entities, and managed the strategy and prosecution of a U.S. patent portfolio
Litigation
- Enforced a patent involving RF laser technology for skin
- Defended a precision instruments supplier against the holder of a camera system patent
- Defended an online retailer against the holder of Internet patents
- Enforced patents involving safety needles (Becton-Dickenson v. Tyco)
- Defended against patents involving stents (Cordis Corp. v. Medtronic AVE, et al.)
- Enforced patents involving compact disks (DiscoVision Associates v. Disc Manufacturing, Inc.)
Insights
Credentials
Education
- J.D. American University, Washington College of Law 1994
- B.S. Mechanical Engineering Union College 1988
Bar Admissions
- District of Columbia
- New York
- Pennsylvania
- Virginia
- U.S. Patent and Trademark Office
Professional Memberships and Activities
- Certified Patent Valuation Analyst
Recognition
- Legal 500, Intellectual Property - Patents: Litigation (full coverage), 2024
- Chambers USA, Intellectual Property: Patent Prosecution, Washington, DC, 2019 – 2024
- IAM Patent 1000, The World’s Leading Patent Professionals, Prosecution, 2018 – 2019, 2022 – 2024
- Martindale-Hubbell, Top Lawyer, Washington, DC, 2014 – 2018
Community
Pro Bono
- Professional mentor, Larta Institute
Volunteerism
- Charter member, Rotary International of Great Falls, Virginia