Andrea M. Porterfield
Areas of Focus
Food and Agriculture
Intellectual Property Counseling and Opinions
Trademark and Copyright
, Cleveland State University - Cleveland-Marshall College of Law
, Delta Theta Phi legal fraternity
, Baldwin-Wallace University
, Chemistry; Omicron Delta Kappa national leadership honor society
Admitted to practice before the United States Patent and Trademark Office
Andrea Porterfield considers understanding a client’s business and goals crucial to developing an effective intellectual property strategy and portfolio. She counsels clients in all areas of intellectual property – from patents, trademarks and copyrights to agreements governing confidentiality, licensing, and distribution to opinion work regarding non-infringement, freedom to operate, invalidity, patentability, and overall industry landscape analyses.
Andrea's patent procurement experience involves preparing and prosecuting domestic and foreign patent applications for clients in diverse technology areas, with particular emphasis on animal health products and processes, food chemistry products and processes, biotechnology, nanotechnology, pharmaceuticals, medical devices, and mechanical engineering. In order to help clients effectively manage their intellectual property portfolios, Andrea routinely counsels clients with respect to short-term and long-term patent procurement strategies. She conducts due diligence analyses of intellectual property portfolios in connection with potential mergers and acquisitions, facilitating identification of technologies for patenting, and evaluating third party intellectual property for potential acquisition and licensing opportunities. Andrea has also represented clients in the defense of their patents when challenged in Inter Partes Review (IPR) proceedings.
The Missouri Bar
Kansas City Metropolitan Bar Association
American Intellectual Property Law Association (AIPLA)
Institute of Food Technologists
Successfully argued against the institution of an Inter Partes Review (IPR) Petition filed by a large international animal health company against a composition patent owned by an international OTC animal health pharmaceutical company client. Based on arguments made in defense of the client’s patent, the Patent Trial and Appeal Board (PTAB) declined to institute IPR of any challenged claims.
Helped a company bring new animal health products to market by issuing freedom to operate opinions, drafting patient applications and working with executives to ensure entry into the marketplace and protection of intellectual property.
Preparing, prosecuting, and managing extensive intellectual property portfolio covering flea and tick composition.
Conducted intellectual property due diligence for the acquisition of a biomarker testing product company by a leading molecular diagnostic company.
Negotiated a distribution/supply agreement between United States distributor and Korean manufacturing company covering distribution of immunochromatographic test kits for the qualitative detection of viruses affecting dogs or cats, including parvovirus, heartworm, and feline infectious peritonitis virus.
Preparing, prosecuting, and managing United States and international patents covering a variety of soy-based technology for international food/nutrition company.
Counseled and assisted start-up companies – including web-based clothing resale company, restaurant, urban renewal company, and granola manufacturing company – on the preparation, filing, and prosecution of necessary trademark applications to protect their business.
Assisted area university in the procurement of a patent covering inorganic chemistry composite composition.
Conducted intellectual property due diligence for the acquisition of a national animal health company by an international over-the-counter pharmaceutical manufacturer.
Real Party-in-Interest and Privy of the Petitioner: Part 2 in Estoppel Analysis
July 20, 2015
Publications & Presentations
Protecting Chemical Trade Secrets Vs. OSHA Compliance
July 8, 2015
Recent Case Law, PTAB Decisions Provide Clarity on Exceptions to “Could-Have-Raised” Estoppel
July 6, 2015
Protecting Your Chemical Trade Secrets vs. OSHA Compliance: What You Must Disclose and What You Can Keep Confidential
June 5, 2015
FDA Restricts Omega3s
May 9, 2014
Publications & Presentations
American Bar Association
Co-author for Chapter on Biotechnology and the Law
"It’s important to me to spend time understanding a client's business and goals so that I can help them keep, protect, and enforce the intellectual property they have worked so hard to create."
© Polsinelli PC, Polsinelli LLP in California
All Rights Reserved