Emily Miao is Chair of MBHB’s Startups and Entrepreneurs Practice Group. With over 20 years of experience in all aspects of intellectual property practice, clients seek her counsel on a wide variety of intellectual property matters, including:

• Validity
• Infringement
• Freedom-to-operate (FTO)
• Due diligence reviews
• Patent, trademark and copyright procurement
• Patent strategy and portfolio management
• Licensing and secrecy agreements

Dr. Miao specializes in helping entrepreneurs, universities, startups and early-stage companies protect innovations and build patent portfolios that generate long-term value. Dr. Miao has helped several clients build their portfolios from a single patent to global portfolios.

Dr. Miao is an active participant in Chicago’s startup community.

• MATTER Chicago: Miao has been a mentor at Chicago Innovation Mentors (CIM) and CIM at MATTER Chicago for over 10 years, where she has guided numerous startups and early stage companies on IP strategy.
• SmartHealth Catalyzer: Miao is a member of the ops team of SmartHealth Catalyzer, an organization supporting and promoting university spinoff ventures in North Chicago and across the Midwest. As a mentor, she frequently works with businesses on intellectual property matters, including issues related to IP due diligence, protection of IP-related assets and IP-related agreements (e.g., licensing and research agreements).
• Women in Bio (WIB): Dr. Miao has served on the Chicago Chapter’s Advisory Board of Directors for this national organization that is committed to promoting careers, leadership and entrepreneurship for women in the life sciences.
• High School and University programs: Miao serves as a member of the Board of Advisors at the Chicago-Kent College of Law Patent Hub. She has also served as a judge at the Northwestern University’s Venture Challenge and Entrepreneur Idol events as well as Libertyville High School’s Project Lead The Way (PLTW) student pitch competitions.

Outside of work, Dr. Miao enjoys hiking and kayaking in northern Illinois. She has also served as a beer judge, where she applied her expertise in porters and stouts.

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

• Developed and managed IP portfolio involving a nanotech-based diagnostic platform for start-up client that was subsequently acquired by a leading diagnostic company.
• Developed and managed IP portfolios for a number of early stage drug development, diagnostics, and medical device clients.
• Developed and managed IP portfolios in a wide range of technologies for university clients, including coordinating with university licensees.
• Counseled entrepreneurs, start-up and early stage clients, including non-infringement, invalidity, patentability, and freedom to operate opinions as well as patent licensing.
• Counseled 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.

“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.