Mythili Markowski, Ph.D.

Mythili Markowski is Counsel with Buchanan Ingersoll & Rooney, where she focuses her practice on intellectual property law, specifically patent prosecution and litigation for clients in the pharmaceutical and biotechnology industries. For more than 16 years, she has assisted a range of clients from single inventors to large corporations to help secure, protect, or litigate their intellectual property.

In her IP litigation practice, she has been associated with a number of inter partes review and patent interference matters before the Patent Trial and Appeal Board on behalf of Petitioners and Patent Owners. A number of these inter partes review proceedings were co-pending with district court action. Mythili’s inter partes review experience includes involvement in all phases of the review proceedings.

Mythili’s IP district court litigation experience includes a special emphasis on pharmaceutical patent litigation under the Hatch-Waxman Act. Mythili has extensive pre-filing counseling experience that includes evaluating innovator IP portfolios from a generic perspective. She has drafted hundreds of invalidity, non-infringement and freedom-to-operate opinions related to small molecule therapeutic compounds, pharmaceutical formulations, crystalline polymorphs, enantiomers, solvates, salts, dosage forms (including oral, topical, ophthalmic, nasal and parenteral dosage forms), pharmacokinetics, pharmacodynamics, biologics, methods of production and methods of use/treatment. Whether it is a question of certification filing strategy, the possibility of designing around an innovator’s product, the impact of a use code or data exclusivity or patent term extension, Mythili is able to assist her clients with assessing all pre-filing options. Her post-filing experience includes all aspects of Hatch-Waxman district court litigation, from answering a complaint to drafting invalidity and non-infringement contentions, motion briefs, summary judgment briefs and statements of material facts, to discovery, to settlement. She has extensive experience in the recruitment, management and deposition of litigation experts.

Mythili also maintains an IP counseling practice, which incorporates IP procurement, IP due diligence, as well as preparing all types of IP opinions, including patentability, freedom-to-operate, invalidity and non-infringement opinions. She has prosecuted nearly 1,000 patent applications, domestically and for foreign equivalent offices for close to 100 clients. She has experience in tailoring IP protection plans for clients who balance trade secrets with patent portfolios.

Mythili rejoined Buchanan from a global pharmaceutical company, where she was a senior patent attorney responsible for opposition proceedings, FTO licensing, intellectual property contract review and counseling, due diligence, inventorship analyses, freedom-to-operate, and domestic and foreign utility patent prosecution.

Mythili’s graduate research was primarily focused on determining the three-dimensional structure of a protein involved in axon guidance, MICAL (Molecule Interacting with Cas-L). After obtaining structural data pertaining to this protein, she was able to establish spectrophotometric assays to monitor MICAL’s catalytic activity. The protein studied is critical for proper nerve path-finding in the embryonic and adult nervous systems. Her technical knowledge also includes molecular biology, protein biochemistry, powder X-ray crystallography, enzymology, neuroscience, biotechnology, nanotechnology, immunology and cell biology.