Toni-Junell Herbert

Partner

Washington, D.C.
T +1.202.861.1578
F +1.202.861.1783

Overview

Toni Herbert devotes much of her intellectual property (IP) practice to the representation of U.S. and international clients through every stage of IP development, handling IP auditing and due diligence, patent litigation, licensing and technology transfer, and other corporate issues. With her significant experience negotiating and resolving IP matters, she has served as a trusted counsel for numerous corporations, investment banking entities and venture capital groups. Toni has extensive experience preparing and prosecuting patents before the U.S. Patent and Trademark Office, in addition to serving as lead counsel in interference and derivation proceedings, and as trial counsel in patent litigation. With her substantial industry knowledge, Toni is able to apply an holistic approach to a client's distinct patent-related matters.

Select Experience

  • Represented on of the world's largest pharmaceutical companies in evaluating a potential multibillion-dollar acquisition of a European biotechnology company.
  • Represented an S&P 500 chemical company in a declaratory judgment action brought by an American aerospace manufacturing company relating to patents on polymeric compositions.
  • Advised a start-up athletic company to establish an IP portfolio protecting its product line and licensing the product to a major international company.
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Experience

  • Represented on of the world's largest pharmaceutical companies in evaluating a potential multibillion-dollar acquisition of a European biotechnology company.
  • Represented an S&P 500 chemical company in a declaratory judgment action brought by an American aerospace manufacturing company relating to patents on polymeric compositions.
  • Advised a start-up athletic company to establish an IP portfolio protecting its product line and licensing the product to a major international company.
  • Defended a subsidiary of one of the world's largest research-based pharmaceutical companies regarding an alleged infringement of patents concerning Hepatitis C virus technology, brought by a multinational biotechnology firm.
  • Defended a multibillion-dollar manufacturer in a patent infringement case involving marine stern drives.
  • Represented a small U.S. company in patent infringement litigation concerning tissue technology.
  • Co-authored papers and abstracts in multiple publications including the Journal of Cell Biology, Blood (the journal of the American Society of Hematology), Lasers in Surgery and Medicine, Journal of Laboratory and Clinical Medicine, The Law Forum, IAM (Intellectual Asset Management), and Burrill Investment Quarterly (Asia Edition).

Recognitions and Memberships

Recognitions

  • IAM 1000: World's Leading Patent Professionals (2016)
  • IAM: Recommended Patent Prosecution (2014 to 2017)

Memberships

  • American Intellectual Property Law Association
  • Intellectual Property Owners Association

Pro Bono

  • Volunteered as a litigator to advocate for the rights of disabled veterans before the Board of Veterans Appeals and the U.S. Supreme Court.

Industries

Prior Positions

  • The Honorable Phillip B. Baldwin, U.S. Court of Appeals, Federal Circuit: Intern

Admissions

  • U.S. Patent and Trademark Office, Registration No. 34,348
  • U.S. Supreme Court
  • U.S. Court of Appeals, Federal Circuit
  • Maryland Court of Appeals
  • U.S. Court of Appeals, District of Columbia Circuit
  • District of Columbia
  • Maryland

Education

  • J.D., University of Baltimore School of Law, cum laude
  • B.A., University of Colorado