Sonia K. Guterman

Sonia K. Guterman

Attorney Contact Info:

Phone: 617.439.4990
Fax: 617.439.3987

Email Attorney

Professional Bio:

Bar Admissions:
United States Patent and Trademark Office (1999)
Massachusetts, 2001

Education:
Suffolk University (evening division) (J.D.)
Massachusetts Institute of Technology (Ph.D.)
Thesis Title: An Inhibitor of Colicin B
Cornell University (M.S.)
Thesis Title: “A Mitodrondrial Mutant of Neurospora crassa”
Cornell University (B.S.)

Professional Associations
Boston Bar Association, Boston Patent Law Association, Massachusetts Bar Association, American Association for the Advancement of Science

Inactive memberships:
Sigma Xi, Genetics Society of America, American Society for Microbiology

Awards and Teaching:
Invited Speaker: AFTTE Conference, San Francisco; Insight Conferences on Licensing, New York, Chicago .
Principal Investigator on grants from federal and private agencies including NSF, NIH-GMS, AHA and March of Dimes-Basil 0-Connor.
NIH-Post-Doctoral Fellowship.
Pre-Doctoral Fellowship from the NIH.
Tenured faculty, Boston University , Associate Professor of Genetics.

Licensing Experience:
Massachusetts Institute of Technology
Technology Licensing Officer, Biotechnology (1993 — 1995)
Evaluation of commercial potential of inventions in biology, chemistry, chemical engineering, in and from Center for Cancer Research and Whitehead Institute.
Case Management from evaluation disclosures, choice of attorney, identification of licensees, marketing approaches and license preparation and negotiation. Closed over 35 deals with biotechnical and pharmaceutical firms in United States, Canada and Europe.

Invited Speaker: BioPharm Conference, Boston; Society for Industrial Microbiology Meeting; Practicing Law Institute Licensing and Intellectual Property Conference. Initiated and co-authored survey of impact of MIT Biotech Licensing on national economy.
Invited Participant: AUTM Economic Impact Committee

Scientific Experience:
Dana-Farber Cancer Institute
Visiting Scientist (1992-1993)
Sabbatical to study cancer-related signal transduction in epithelial cells in laboratory of Prof. Charles Stiles, including experiments on a membrane-associated growth factor isolated from membranes. Full participation in laboratory and departmental seminar series.

Protein Engineering Corporation
Vice President for Research (1987-1991)
Co-founder with responsibilities for formulation and implementation of scientific activities, building operating staff of Senior and Assistant Scientists, obtaining regulatory approvals, training scientists in compliance procedures, preparation of patent applications and collaborative development proposals, and negotiations with potential commercial partners. Preparation of Prospectus for investors, presentations to investors, and selection and recruitment of Board of Directors and Science Advisory Board. Coordinated interactions with industrial counterparts and academic consultants and prepared joint venture proposals for commercial and academic partnerships. Co-Inventor of broad-based patents and continuing patent applications on phage display, currently licensed to over 50 companies and academic institutions.

Biotechnica International, Inc.
Senior Scientist (1983-1987)
Research on protein expression and secretion in Streptomyces and antibiotic biosynthesis improvement by recombinant DNA methods. Marketed product, patented vector, negotiated joint development deals, and interfaced with corporate scientists.

Harvard University
Visiting Professor (1982-1983)
Sabbatical studies, Bacillus subtilis and Streptomyces vector construction

Boston University
Tenured Associate Professor (1982-1984)
Assistant Professor (1976-1982)
Molecular studies of E.coli transcription termination, models of macromolecular interactions among rho RNA polymerase and ribosomal proteins. Numerous publications in leading refereed journals such as PNAS and JBC. Invited Speaker: Meetings and Seminar Speaker at Universities including Yale, Stanford, Berkeley and Rutgers.

Tufts University School of Medicine
Instructor, Research Associate, Post-Doctoral Fellow of the NIH (1972-1976)
Pharmacological studies on affinity for iron of the gram-negative bacterial iron chelator enterochelin as potential therapeutic agent and mammalian iron-binding proteins. Function and structure of RNA polymerase, and bacteriophage and colicin receptors, in the laboratory of Andrew Wright.

Massachusetts Institute of Technology
Ph.D. Microbiology
Characterized membrane iron transport proteins and receptors for phage and colicins. First demonstration that gene products which are protein and are receptors for viral binding can function in a physiological cellular transport process, and identification of genes involved in synthesis and regulation of the iron chelator, in the laboratory of S.E. Luria.

Issued Patents, Published Patent Applications, and Selected Scientific Publications:
Guterman, S.K., Pero, J., Robbins, P.W.
Secretion Vector for Streptomyces
U.S. Patent No. 4,745,056, Issued May 17, 1988
Ladner, R.C., Guterman, S.K., Ley, A.C., Kent, R.B.
Generation and Selection of Novel DNA-Binding Proteins and Polypeptides.
U.S. Patent No. 5,096,815, Issued March 17, 1992
Ladner, R.C., Guterman, S.K., Roberts, B.L., Markland, W., Ley, A.C., Kent, R.B.
Generation and Selection of Novel Binding ProteinsU.S. Patent No. 5,223,409, Issued June 29, 1993
Ladner, R.C., Guterman, S.K., Roberts, B.L., Markland, W., Ley, A.C., Kent, R.B.
Viruses Expressing Chimeric Binding Proteins
U.S. Patent No. 5,403,484, Issued April 4, 1995
Ladner, R.C., Guterman, S.K., Roberts, B.L., Markland, W., Ley, A.C., Kent, R.B.
Directed Evolution of Novel Binding Proteins
U.S. Patent No. 5,571,698, Issued November 5, 1996
Ley, A.C., Ladner, R.C., Guterman, S.K., Roberts, B.L., Markland, W Kent, R.B.
Engineered Human-Deprived Kunitz Domains that Inhibit Human Neutrophil Elastase
U.S. Patent No. 5,663,143, Issued September 2, 1997

Practice Description:

Patent matters: Responsibility for all aspects of patent preparation and prosecution for major universities and industrial clients, including training and supervising staff for patent prosecution of clients transferred from predecessor firm; specializing in biotechnology, chemistry, nanotechnology and biophysics. Major achievement receipt of large portfolio transferred from Testa Hurwitz upon dissolution of that firm.

Patent licensing transactions: Advising university clients on contract law with respect to management of licenses, including license terms regarding pre-existing corporate IP.

Major Achievement analysis of university license for terms relating to possible university termination of unproductive licensee.

Mintz Levin Cohn Ferris Glovsky and Popeo PC, Boston, MA (2001-Oct. 2004), Associate
Patent Matters: Primary responsibility for major industrial and academic clients, including patent preparation and prosecution to allowance, and preparation of freedom-to-use opinions. Patent applications in areas of cancer for Tufts University (see PCT application by Bryan Toole) and Harvard Medical School (see PCT applications by Martin Dorf and Hidde Ploegh).
Major Achievement: allowance of patents with large number of added patent term days for swift prosecution (e.g.,462 days for one patent, 266 for another).

Patent licensing transactions: Advised clients on university licenses, including presentation to corporate management and boards of directors.
Major achievement: analysis of patent invalidity based on duty of candor, as a tool in obtaining substantial reduction in license fees.

Broomberg & Sunstein LLP, Boston, MA (1998-2000; 2000-2001), Technology Specialist; Special Counsel.
Patent matters: Preparation and prosecution of domestic and foreign patent applications for enterprises ranging from start-up, through well-established companies and academic institutions. Patent experience in areas of biophysics, biochemistry, molecular biology, protein engineering, microbiology, therapeutic agents, pharmacology, drug delivery, and organic chemistry. Patent preparation and prosecution in areas of transdermal drug delivery and cosmetics, with emphasis on lipid composition, for major European company.

Patent licensing transactions: preparation and evaluation of intellectual property licenses.
Clearance opinions. Technology-based litigation: evaluation and organization of technical subject matter. Lahive & Cockfield, Boston, MA (January 1996- February 1998), Technology Specialist Preparation and prosecution of patent applications; patent license agreements.

Attorney Guterman was included on the Super Lawyers® list for the following years:

Rising Stars 2011Rising Stars 2010
Rising Stars 2009