Heidi Lunasin

Strategic and Practical Patent & Intellectual Property Counsel

Patent Law: Patent prosecution and portfolio management, PCT filings, Inter Partes Review and reexamination proceedings, patentability, infringement and validity analyses, freedom-to-operate opinions, and patent litigation and opposition matters across multiple jurisdictions

IP Transactions and Counseling: Advising clients on IP-related contracts, licensing and collaboration agreements, due diligence, IP portfolio strategy, freedom-to-operate analyses, product clearances, and risk assessment and mitigation

Trademark Law: Global trademark opposition and litigation monitoring, and strategic counseling regarding the protection, enforcement, and management of international trademark rights

Experience

Former in-house counsel with Big Law experience

• DUANE MORRIS LLP: Former Special Counsel who advised clients on identifying, evaluating, and protecting intellectual property assets, supported international litigation and IP proceedings, conducted IP clearance and risk assessments, and prepared Freedom-to-Operate and other legal opinion letters.
• VEDDER PRICE: Former Associate who advised on IP-related contracts, prepared and filed Inter Partes Review proceedings, monitored global opposition and litigation matters to support international client positions, and conducted IP clearance evaluations based on clients’ fields of interest.
• ADIDAS: Former Senior Patent Counsel who led global IP strategy and portfolio management for various product lines, overseeing patent prosecution, licensing, due diligence, freedom-to-operate, infringement and validity analyses, product clearances, and risk mitigation, while partnering with global stakeholders and managing outside counsel, suppliers, and multinational IP teams.
• TREOFAN: Former Senior IP Counsel who built and leveraged global IP portfolios, led complex freedom-to-operate analyses and risk mitigation strategies, negotiated collaborations and development agreements, and managed patent prosecution, litigation, and opposition proceedings across multiple jurisdictions.
• FROMMER, LAWRENCE AND HAUG: Former Associate who represented clients before the USPTO, filed PCT patent applications, and prepared patent reexamination requests.

Education

• LL.M., Baylor University
• J.D., Seton Hall University Law School
• M.S.P.H., University of North Caroline at Chapel Hill
• B.S. in Chemical Engineering, Rutgers University
• Admitted to practice law in New York, New Jersey, and the District of Columbia
  Registered Patent Attorney with U.S. Patent & Trademark Office (USPTO) 

Practice Areas:

• Patent Law
• IP Transactions and Counseling
• Trademark Law