Emily Miao, Ph.D.

Partner
P: 312.913.2126
F: 312.913.0002

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.

Published Articles

"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.

Memberships

American Chemical Society
American Association for the Advancement of Science
Midwest Entrepreneurs' Forum
MIT Enterprise Forum

Distinctions

Chicago-Kent Intellectual Property Law Society (IPLS) 2010 Distinguished Alumna Award

Publications

Spring 2013 (snippets)
On February 14, 2013, Tiffany filed a lawsuit against Costco Wholesale Corporation (“Costco”), alleging that Costco was engaging in the sale of counterfeit TIFFANY diamond engagement rings. Tiffany’s complaint against Costco alleged violations of federal and New York law, including counterfeiting, trademark infringement, dilution, unfair competition, injury to business reputation, false and deceptive business practices, and false advertising. In its defense and in support of its counterclaims, Costco mainly argued that “[t]he word Tiffany is a generic term for ring settings comprising multiple slender prongs extending upward from a base to hold a single gemstone.”  This article reviews the relative strengths/weaknesses of the main arguments presented by the parties and provides an assessment of which party is more likely to prevail based on the strength of these arguments.
Fall 2012 (snippets)
What if trade secret misappropriation occurs abroad and the misappropriated trade secret is used to manufacture products that are then imported into the United States to compete with the trade secret owner’s products? Under the TianRui decision, a U.S. company doing business abroad may have recourse in the International Trade Commission (“ITC”) under section 337 of the Tariff Act of 1930 (“section 337”) to exclude the importation of products that embody a misappropriated trade secret, even when the trade secret theft occurred entirely outside of the United States and the U.S. company is not using its trade secret in its products.
Spring 2012 (snippets)
Fall 2011 (snippets)
Fall 2010 (snippets)
Winter 2010 (snippets)
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