Penina Michlin focuses her practice on intellectual property matters, commercial transactions, and business and corporate law. She advises clients on patent and trademark strategy, intellectual property litigation, technology-related transactions, and the treatment of intellectual property assets in corporate and commercial matters.
Penina was admitted to practice before the United States Patent and Trademark Office (USPTO) in 2008 and has extensive experience prosecuting patents and managing international patent portfolios. Her patent practice focuses on mechanical engineering and computer technologies, including technologies involving oil and gas systems, submersible pumps, offshore natural gas operations, and electronic gaming systems.
Clients rely on Penina for sophisticated IP guidance informed by her strong technical background and broad transactional experience. She regularly advises businesses on patent protection strategies, freedom-to-operate analyses, patent validity opinions, trademark portfolio management, branding matters, and IP licensing arrangements.
Penina also represents clients in patent reexamination proceedings, Patent Trial and Appeal Board proceedings, trademark opposition proceedings before the Trademark Trial and Appeal Board, and trademark and patent litigation in federal court.
Her patent infringement litigation practice focuses heavily on defense against patent assertion entities and patent troll litigation, particularly within the financial services industry and other frequent targets of patent-enforcement campaigns. Clients value her ability to assess patent scope and technical issues efficiently in order to minimize litigation exposure and resolve disputes effectively.
In addition to her IP practice, Penina has experience advising banks, private equity funds, and international companies on mergers and acquisitions, entity formation, and general corporate matters. She is also a member of the MIT Educational Council.
University of California, Berkeley – Boalt Hall, J.D., 2005
MIT, B.S., Materials Science and Engineering and Physics, 2000
Candace Caywood
ccaywood@fdlaw.com
Experience and Insight for your most complex legal matters