Mind + Muscle

technical minds + legal muscle

Bracket
Sterne Kessler Goldstein Fox
Robert C. Millonig, Jr., Ph.D.

Mind + Muscle

Robert C. Millonig, Jr., Ph.D.

Director

 

Dr. Millonig, a director in the Biotechnology/Chemical Group, has significant experience developing and analyzing complex multi-patent portfolios for marketed innovator and generic pharmaceutical products.  His approach to resolving legal issues revolves around reaching the solution that best meets the client's business needs, rendering more than 5,000 opinions in the pharmaceutical space alone.  Dr. Millonig counsels clients in various intellectual property matters including patent validity and infringement analysis, freedom to operate, patentability investigations and FDA/ANDA practice.  He is versed in the interplay between FDA regulations and patent law and has successfully co-counseled on major litigation involving patent challenges.

Specifically, Dr. Millonig has been involved in developing strategy for challenging patents on fexofenidine, alendronate, raloxifine and extended release niacin to name a few.  Dr. Millonig has also provided strategic and technical counsel for top companies such as Teva Pharmaceutical Industries Ltd. and Apotex.

Dr. Millonig's extensive pharmaceutical know-how and evaluations of paragraph IV challenges enable him to evaluate and bolster innovator patent holders' portfolios by reviewing them from a unique generic perspective.

Dr. Millonig's technical experience is focused in the areas of biochemistry, molecular and cell biology, chemistry and pharmacology.  He has extensive experience prosecuting United States patent applications and providing counsel in these areas.

Dr. Millonig's dissertation research relates to the structure and polymerization of the actin filament and involved electron microscopy as well as various protein chemistry techniques.  While conducting his dissertation research, Dr. Millonig spent three years at the Biozentrum of the University of Basel, Switzerland.

Publications
  • "Patentees: Caveat Emptor of the 'On-Sale Bar'!" Krishan Thakker, Lei Zhou, Robert C. Millonig, Jr. Ph.D., and Gaby L. Longsworth, Ph.D., Bloomberg BNA's Patent, Trademark & Copyright Journal, May 2016
  • "The Best Offense Is a Good Defense: Patent Prosecution Strategies During Personalized Medicine Drug Development," Robert C. Millonig, Jr., Ph.D., Marsha Rose Gillentine, Ph.D., and Rebecca Hammond, Ph.D., Biotechnology Law Report, March 2015.
  • "Divide and Conquer," Marsha Rose Gillentine, Ph.D., Robert C. Millonig, Jr., Ph.D., and Rebecca Hammond, World Intellectual Property Review, November 2014.
  • "An Alternative Attack in Inter Partes Review," Robert C. Millonig, Jr., Ph.D. and Gaby L. Longsworth, Ph.D., IP Law360, October 2014.
  • "Selection Invention Found Unpatentable For Obviousness-Type Double Patenting," Marsha Rose Gillentine, Ph.D., Gaby L. Longsworth, Ph.D., and Robert C. Millonig, Jr., Ph.D., Sterne, Kessler, Goldstein & Fox, August 2014.
  • "Biotech Collaborations and Maximizing Patent Protection: Two Hypotheticals,"  Eric K. Steffe and Robert C. Millonig, Jr., Ph.D., AIPLA Quarterly Journal 149, January 1999.
  • Admissions
      • District of Columbia

      • United States Patent and Trademark Office

  • Education
    • J.D., George Washington University with honors

    • Ph.D., Biochemistry, Cellular and Molecular Biology, The Johns Hopkins University

    • B.S., Biochemistry, Manhattan College cum laude

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