Emily Miao

, Ph.D.

Overview

Emily Miao, Ph.D. is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Startups & Entrepreneurs Practice Group. Dr. Miao has over 20 years of 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 universities and is particularly experienced in representing entrepreneurs, start-ups, and early stage companies in prosecution, counseling, licensing and IP portfolio management. Her recent cases have involved industrial catalytic processes, semiconductor devices, sensors, materials, medical devices, nanotechnology, biotechnology, pharmaceuticals, diagnostic systems, molecular biology, drug delivery systems, organic chemistry, and purification processes.

Dr. Miao serves as speaker, moderator, or panelist at industry events relating to intellectual property matters. She also serves as a judge at the Northwestern University’s Venture Challenge and Entrepreneur Idol events. Dr. Miao has been a mentor at Chicago Innovation Mentors (CIM) and CIM at MATTER Chicago for over six years, where she had worked with over 14 startups and early stage companies, including three companies where she served as the mentor team leader.  She has also conducted numerous IP workshops at MATTER Chicago related to sponsored research agreements, trade secrets and the patenting process. Dr. Miao is also a member of Group Genius of SmartHealth Activator, an incubator supporting and promoting University spinoff ventures in North Chicago and the Midwest region. As a mentor, she frequently works with businesses on intellectual property matters including issues related to protection of IP-related assets and IP-related agreements including licensing and research agreements. She is also actively involved Women in Bio (WIB), a national organization committed to promoting careers, leadership and entrepreneurship for women in the life sciences, and serves on the WIB Chicago Chapter’s Advisory Board of Directors. Dr. Miao also serves as a member of the Board of Advisors at the Chicago-Kent College of Law Patent Hub.

Education
  • Ph.D., New York University,

    Chemistry; Thesis: Design and synthesis of mechanism-based enzyme inhibitors of mammalian steroidogenesis and de novo cholesterol biosynthesis; Massachusetts Institute of Technology, Postdoctoral Chapman Fellowship

  • B.S., New York University,

    Chemistry and Biology

  • J.D., Chicago-Kent College of Law
Bar Admissions
  • Illinois
  • U.S. Patent & Trademark Office
Memberships
  • Chicago Innovation Mentors of MATTER Chicago
  • Group Genius of SmartHealth Activator
  • Chicago Kent College of Law Patent Hub
  • Women in Bio (WIB) Chicago Chapter
  • Association of University Technology Managers (AUTM)

Recognition

  • Recipient, 2017 USPTO Patent Pro Bono Achievement Certificate
  • Chicago-Kent Intellectual Property Law Society (IPLS) 2010 Distinguished Alumna Award

Experience

  • Developing and managing IP portfolio involving a nanotech-based diagnostic platform for start-up client that was subsequently acquired by a leading diagnostic company
  • Developing and managing IP portfolios for a number of early stage drug development, diagnostics, and medical device client
  • Developing and managing IP portfolios in a wide range of technologies for university clients, including coordinating with university licensees
  • Counseling of entrepreneurs, start-up and early stage clients, including non-infringement, invalidity, patentability, and freedom to operate opinions as well as patent licensing
  • Counseling of clients with respect to all aspects of trademarks, copyright and trade secrets, including advising on trademark selection and steps for implementing a trade secret protection program

Published Articles

“What Startups Need to Know About Patent Licensing,” smallbizdaily.com, July 31, 2019. 

“What Every Startup Needs to Know to Avoid Common IP Pitfalls,” smallbizdaily.com, November 29, 2018.

“When Final is Not So Final: Strategies for Overcoming Final Rejection,” Westlaw Journal Intellectual Property, Vol. 24, Issue 17, December 5, 2017.

“Why Tiffany Won $15M from Costco,” National Jewelry, October 12, 2016.

“Strategies for expediting the patent process,” Intellectual Property Magazine, April 5, 2016.

“‘Blurred Lines’ artists lose multimillion-dollar copyright lawsuit,” Westlaw Journal Intellectual Property, Vol. 22, Issue 9, August 19, 2015.

“Pursuing foreign patent protection,” Intellectual Property Magazine, April 14, 2015.

“Tips for Developing a Cost-Effective Foreign Patent Strategy,” IPFrontline, March 11, 2015.

“The blurred lines of copyright infringement of music become even blurrier as the Robin Thicke v. Marvin Gaye’s estate lawsuit continues,” Westlaw Journal Intellectual Property, Vol. 21, Issue 1, April 30, 2014.

“The blurred lines of what constitutes copyright infringement of music: Robin Thicke v. Marvin Gaye’s estate,” Westlaw Journal Intellectual Property, Vol. 20, Issue 15, November 13, 2013.

“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.