Elizabeth M. O'Donoghue, Ph.D.

Associate

eodonoghue@stradley.com

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Elizabeth O'Donoghue

Overview

Elizabeth O’Donoghue concentrates her practice in all aspects of intellectual property matters and related business issues.  Elizabeth has represented clients from individuals, start-ups, educational institutions, to large corporations in a variety of industries such as biotechnology, pharmaceuticals, medical devices, chemical industries, financial, retail, apparel, and online businesses.  She has a technical background in anatomy and neuroscience, particularly in the biotech and pharmaceutical space. She has been involved in patent prosecution concentrating on patent preparation and prosecution, international patent portfolio management, as well as reports on patentability, infringement and validity.

Elizabeth assists clients in developing comprehensive and effective intellectual property portfolios including domestic and international trademark and
copyright strategies.  She has been involved in the development, management, maintenance, and enforcement of trademarks both domestically and internationally. She assists clients in the preparation and negotiation of assignment, license and confidentiality agreements and has been involved in a number of Internet-based issues including social networking issues, domain name disputes and Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings.

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Representative Matters

  • conducted an extensive number of domestic and foreign trademark clearance searches for a large pharmaceutical company on an expedited basis
  • represented a software company in a successful UDRP proceeding
  • prepared a non-infringement opinion for a startup biotech company in order for the company to receive funding
  • managed domestic and foreign trademark portfolios, including assertion and defense of trademark matters, for many clients
  • achieved favorable outcomes in opposition and cancellation proceedings for a number of clients both domestically and internationally
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Credentials

Bar Admissions
  • Massachusetts
  • Pennsylvania
  • U.S. Patent and Trademark Office
Education
  • J.D., Villanova University School of Law
  • Ph.D., Boston University
  • B.S., University of Pittsburgh
Memberships

  • American Bar Association
  • Pennsylvania Bar Association
  • Stradley Ronon Hiring Committee
  • Young Professionals Leadership Council, American Diabetes Association
  • International Trademark Association 

Publications

Speaking Engagements

  • Speaker, “Year in the Review – Trademark,” Pennsylvania Bar Institute 12th Annual Intellectual Property Law Institute  
  • Panelist, “Removing IP Barriers to Make Money for Your Clients,” Association of Corporate Counsel 8th Annual In-House Counsel Conference
  • Speaker, “Year in the Review – Trademark,” Pennsylvania Bar Institute 11th Annual Intellectual Property Law Institute  

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Recognition

Pennsylvania Super Lawyers, Rising Star
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In The Community

Elizabeth is a member of the Young Professionals Leadership Council of the American Diabetes Association.
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