Sean O’Donnell, Ph.D.,  Partner  

1 202 340 4576

Dr. O'Donnell heads the Life Sciences Practice where he employs a strategic planning approach to help client companies identify the key elements of their intellectual property and maximize the value of their IP portfolio.  Dr. O’Donnell provides IP services directed to increasing valuations, paving a path to market entry, and optimizing future expansion for technology companies.

Dr. O'Donnell has counseled start-ups, institutions, and Fortune 500 companies on how to acquire, assert, and defend their intellectual property rights.  He advises companies and institutions operating across a wide variety of technologies, including pharmaceuticals, biological products, medical devices, high throughput sequencing, and telecommunications.  Dr. O'Donnell specializes in IP consulting, strategic planning, due diligence, freedom to operate, and client counseling.

Dr. O’Donnell earned his Ph.D. in molecular biology and biophysics from Columbia University, where he studied mammalian neurobiology in the laboratory of Richard Axel, M.D., recipient of the 2004 Nobel Prize in Physiology or Medicine.  Dr. O'Donnell graduated with honors from George Washington University Law School and obtained a Bachelor of Arts from Princeton University.  He teaches Patent and Know-How Licensing as an adjunct professor at George Mason University School of Law.  He is also active in the D.C. Bar, serving as Vice-Chairman of the Trade Secrets Committee, and in Princeton Athletics, serving as Class Agent for the Friends of Princeton Swimming.

Bar and Court Admissions: California; District of Columbia; U. S. Patent & Trademark Office

Education:  Princeton University, B.A. History, 1989; Columbia University Integrated Program in Cellular, Molecular, and Biophysical Studies, Ph.D., 2004; George Washington University School of Law, J.D., 2008.

Select Publications:

  • The Explicit Definition of a Claim Term Is Not Limiting Where It Excludes a Preferred Embodiment,  IP Update, March 2014.

  • Combining Two Drugs Is Not Always Obvious, IP Update, May 2014.

  • A Compound Is Obvious Where Only Minor Changes to a Prior Art “Lead Compound" Are Required to Make the Claimed Compound, IP Update, July 2014

  • Patent Owners: Better Address All Obviousness Arguments Raised by Petitioner, IP Update, September 2014.

  • PTAB On Analogous Art, IP Update, September 2014.

Scientific Publications:

  • Odorant Receptors on Axon Termini in the Brain, 304(5676) Science 1468 (2004).

  • Gene Switching and the Stability of Odorant Receptor Gene Choice, 117(6) Cell 801 (2004).

  • Spontaneous Activity is Required for the Establishment and Maintenance of the Olfactory Sensory Map, 42(4) Neuron 552 (2004).

Speeches and Presentations:

  • "Managing Conflicts Of Interest and Compliance Issues in University Crowdfunding" Technology Transfer Tactics Webinar; March 3, 2015