Peninsula IP Group: Legal Staff

ANTHONY J. CASTRO | Associate

LEGAL EXPERIENCE

Advanced Cardiovascular Systems - Vascular Intervention Division of Guidant Corporation Santa Clara, California

Patent Counsel -- 1992 to 1998

Advanced Cardiovascular Systems manufactures medical devices for the treatment of coronary and vascular disease. In the position of Patent Counsel, I was responsible for Intellectual Property matters pertaining to virtually all of the ACS divisions which include:

Meeting Corporate goals and objectives by protecting existing intellectual property through patent prosecution, maintaining trade secrets, where appropriate and vigorously defending our Intellectual Property.

Responsible for the selection and oversight of activities of outside counsel in relation to patent litigation, patent prosecution and other activities involving intellectual property. Currently, over one half of my activities are devoted to patent infringement litigation matters both with ACS as the plaintiff and defendant, in the United States and Worldwide.

Providing guidance to the management team relating to patentability of new ideas, infringement by others of proprietary intellectual property and the likelihood of infringement problems arising with other existing patents.

Creation of contractual instruments related to intellectual property including non-disclosure and licensing agreements.

Selection and oversight of activities of outside counsel in relation to patent litigation, patent prosecution and other activities involving intellectual property.

Oversight control and review of documents, publications and statements destined for release outside of ACS.

Development and implementation of policies relating to all aspects of intellectual property.

Stimulation of new ideas and their disclosure through constant interaction with R & D staff.

Training and education of company personnel in intellectual property matters.

Reporting to Secretary, Corporate Counsel

Pharmetrix Corporation

Menlo Park, California

Patent Counsel --1989 to 1992

Pharmetrix Corporation was a start-up company involved in developing technology for the various methods of delivery of drugs in a controlled fashion. Patent activities were in both the mechanical and chemical classes. Actively involved in the drafting and prosecution of patents in the field of transdermal drug release, infusion pumps and controlled release of drugs by other mechanisms. Since I was the sole in-house patent counsel, I was responsible for all patent related matters in all their phases, including initial discussions with inventors to determine the nature and scope of potential inventions; establishing search protocols for novelty searches; formulating opinions relating to patentability and infringement; drafting and prosecuting patent applications from submission of the initial application continuing through amendment stage and allowance. Met regularly with research staff to solicit and encourage patent submissions. Some familiarity with patent appeal and reexamination procedure. When deemed advisable, obtained legal opinions from outside counsel.

Reported to President/Chief Operating Officer

Akzo Chemicals Inc.--1966 to 1989

Headquarters, Chicago, Illinois

Manager Business Development-- 1986 to 1989

Senior member of the Corporate Business Planning and Development Department, responsible for initiating and maintaining a cooperative relationship between the R & D Department and Corporate Business Planning and Development interests. Accountable for business decisions concerning research projects such as negotiating secrecy agreements, joint development contracts, initiating the filing of patent applications, assisting in their prosecution and deciding upon their scope. Assisted in coordination of R & D and marketing groups in the U.S. and Europe.

Reported to Senior Vice President-- Business Planning and Development

Akzo Chemicals Inc.

Assistant Director of Research-- 1976 to 1986.

Primary responsibilities included project origination, justification and approval; direction and supervision of research scientists at all levels; organization and development of new technology for both short range goals and long term strategic position.

Extensive experience with controlled pharmaceutical release devices, enzymatic chemistry, biologically active molecules, polymer chemistry and synthetic organic chemistry. Discovered and developed a technique to produce polymers of a micro porous structure which is, in one conformation, used to construct control release devices for the containment and administration of drugs, pesticides and other high value, hazardous or sensitive substances.

Reported to Vice President/Director of Research.

Smith-Corona-Marchant Co.

Supervisor, Photochemistry Group---1965 to 1966

Responsible for research and development of photochemical methods for image formation-final application in photocopy industry. Coordinated equipment design to use newly developed technology.

EDUCATION:

Doctor of Philosophy in Physical Organic Chemistry, University of Chicago. Research: Synthesis of a Stable Biradical; Charge Transfer Polypeptides; under Professor N.C. Yang.

Master of Science in Organic Chemistry, University of Chicago.

Juris Doctor, John Marshal Law School.

Member of Illinois State Bar.

Member of Federal Patent Bar.

ACADEMIC HONORS

Sigma XI.

New York Academy of Sciences.

American Men of Science.

Who's Who in American Science.

IR 100 Award.

PROFESSIONAL AFFILIATIONS:

American Chemical Society

New York Academy of Sciences

State, Federal and National Bar Associations

Sigma Xi

PUBLICATIONS AND PATENTS:

Vinyl Halide Polymers, 3,609,133

Epoxy Resin Modifiers, 3,519,602

Modifier for Phenolic Resins, 3,577,370

Polyhydroxyamides and Polyurethanes, 3,699,078 3,840,573

Solid Antistats, 4,210,556

Porous Plastics, 4,247,498, 4,519,909

Approximately 25 others.

Influence of Processing Conditions of Mechanical Properties of High Performance Polyurethanes, J.Elast and Plas.,17, Oct 1985 p.238