Dr. E. Kate Berezutskaya

Dr. E. Kate Berezutskaya

kberezutskaya@gbc.law
Direct: 312.987.2916
Office: Chicago


PRACTICE AREAS
Copyright
International IP
Internet & Domain Name Disputes
Licensing, Tech Transfer & IP Agreements
Litigation
Patents
Trade Secrets
Trademarks


EDUCATION

M.S. Biology/Virology
Moscow State University

Ph.D. Molecular Biology/Biochemistry
University of Illinois at Chicago

J.D. Illinois Institute of Technology
Chicago-Kent College of Law


Dr. Kate Berezutskaya is a partner at Greer, Burns & Crain in Chicago.  Her legal practice includes all aspects of intellectual property law, with significant experience and emphasis on securing and protecting patent rights.  Dr. Berezutskaya regularly works with clients to develop and implement global intellectual property (IP) strategies skillfully tailored to business goals.  She is a licensed US patent attorney, regularly prepares US and PCT patent applications and has been successfully representing clients in connection with numerous patent applications before the United States Patent and Trademark Office (USPTO).  Dr. Berezutskaya has significant experience in advising clients on validity and freedom-to-operate opinions.  She also regularly consults clients in connection with patent due diligence analysis, patentability analysis, infringement analysis, license and patent assignment agreements, IP assets transfer agreements, IP ownership rights and joint research & development agreements.  Other aspects of Dr. Berezutskaya’s practice include patent litigation, trade secrets, trademarks and copyrights.  As an adjunct professor at Chicago-Kent College of Law, Dr. Berezutskaya has taught patent law.

Dr. Berezutskaya received her J.D. from Chicago-Kent College of Law where she graduated with a certificate in Intellectual Property Law.  Prior to law school, Dr. Berezutskaya conducted research at the University of Chicago and earned a Ph.D. in molecular biology/biochemistry from the University of Illinois at Chicago and a master’s degree in biology/virology from Moscow State University.

Prior to joining GBC, Dr. Berezutskaya practiced law at a large international law firm, conducted biomedical research, consulted at the University of Chicago technology transfer office and taught science classes to students at the University of Illinois at Chicago.

Experience

  • US and Foreign Patent Prosecution, including appeals and re-examination proceedings before the US PTO
  • Opinions on Patent Infringement, Due Diligence, Validity, Enforceability, Freedom-to Operate, Inventorship
  • Client Counseling in Connection with IP Portfolio Development, Licensing, Patent Acquisition, Technology Transfer, IP Assets Liquidation in Bankruptcy
  • Patent Litigation
  • Re-examination, Post-Grant Review Proceedings
  • US Trademark Registration
  • Internet Copyright Enforcement

Professional Associations

  • Intellectual Property Law Association of Chicago (IPLAC) – Biotechnology Committee, Chair
  • Licensing Executives Society International (LESI), Life Sciences Committee, Past-Chair
  • Licensing Executives Society (LES), Past-Chair for Chicago Chapter

Publications, Presentations & Lectures

  • “Connecting life sciences IP to business development,” Licensing Executives Society Annual Meeting, October 15, 2018
  • “Is it all in our nature?” les Nouvelles (Journal of the Licensing Executives Society International) (2016) Volume LI, No. 2, pp 107-108
  • “Wait a minute. . . I thought that patent was mine.”  Licensing Executives Society Annual Meeting, October 15, 2012
  • Guest Speaker, “Intellectual Property (IP) Assets,” Loyola Law School, February 28, 2012
  • Guest Speaker, “IP Competitive Strategies,” University of Illinois at Chicago, July 20, 2010

Bar Memberships

  • U.S. Patent and Trademark Office
  • Supreme Court of the State of Illinois
  • U.S. District Court for the Northern District of Illinois
  • U.S. Supreme Court

Example Technical Fields

  • Biotechnology
  • Pharmaceuticals
  • Chemical compositions and methods
  • Chemical processes
  • Compounds
  • Formulations
  • Antibodies
  • Proteins
  • Peptides
  • Oligonucleotides
  • Biomarkers
  • Recombinant cells, including stem sell technologies
  • Viruses and vaccines
  • Vectors
  • Small molecules and drugs
  • Cancer drugs
  • Treatments for hereditary and immunological disorders
  • Diagnostic tools and reagents
  • Food supplements
  • Cosmetic preparations
  • Methods of treatment and diagnostics
  • Research reagents
  • Medical devices
  • Surgical procedures
  • Green technologies