Emily Miao, Ph.D. is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. Dr. Miao has broad experience in all aspects of intellectual property practice, including patent, trademark and copyright procurement and portfolio management; client counseling on validity, infringement, freedom-to-operate (FTO), due diligence reviews, and patent strategy matters; and licensing/secrecy agreements. She represents many companies, both large and small, and is particularly experienced in representing start-up companies in prosecution, counseling, and licensing. Her recent cases have involved nanotechnology, pharmaceuticals, biochemistry, molecular biology, drug delivery systems, diagnostic assays, medical devices, and chemical and food processes.
Dr. Miao frequently serves as speaker, moderator, or panelist at industry events. Recent engagements have included the “Tackling IP Issues to Ensure Partnership Success” workshop at the 2011 Licensing Executive Society’s Annual meeting and "IP from Bench to Partnership: Ensuring Partnership Success" workshop at the 2011 iBIO IndEx conference. She also spoke at "Analysis of a Technology License Agreement" panel at Patent Law Institute's 2010 Advanced Licensing Agreements conference. Dr. Miao often serves as a judge at the Northwestern University's Venture Challenge and Entrepreneur Idol events. Dr. Miao previously blogged at ResourceNation.com, one of the premier blogs for entrepreneurs and start-up businesses.
"Tiffany vs. Costco: An analysis," National Jewelry, August 19-23, 2013.
"The TianRui Group Company Ltd. v. U.S. International Trade Commission: A Powerful New Weapon for Combating Trade Secret Misappropriation Abroad," Intellectual Property Today, January 11, 2013.
"The Coach Services Case: When Is a Trademark 'Famous' for Trademark Dilution Purposes?," Westlaw Journal Intellectual Property, Vol. 19, Issue 3, October 17, 2012.
"Due Diligence Review in Patent Licensing Transactions," The Licensing Journal, Vol. 27 (10), November/December 2007.