Alex Oh

Alex Oh

Partner
Seattle, WA
Overview

About Alex

Alex Oh is a partner in the Technology and Intellectual Property group at Stoel Rives LLP. His practice focuses on U.S. and foreign patent strategy, preparation and prosecution for companies in a wide variety of technologies, including biotechnology, chemistry, pharmaceuticals, clean technology, mechanical devices and medical devices. Alex also devotes significant time to intellectual property litigation support, post-grant proceedings for patents, patent opinion letters, patent portfolio analysis, intellectual property counseling, IP due diligence for corporate transactions, freedom-to-operate assessments, and patent infringement and validity analyses.

Alex has been named one of the Top 40 Young Lawyers by the American Bar Association (2016 Honoree). He was also named one of the “Best LGBT Lawyers Under 40” by the National LGBT Bar Association and was awarded the Washington LGBT Leadership Award by the Washington Diversity Council in 2016. Most recently, Alex was named one of the “Best Lawyers Under 40” by the National Asian Pacific American Bar Association in 2018.

In addition, Alex is committed to pro bono and community involvement. Alex serves as an Adjunct Professor at the University of Washington School of Law and teaches courses in intellectual property. He is a past President of the QLaw Association of Washington and currently serves on the Board of Directors of the Asian Bar Association of Washington. Since 2011, Alex has also acted as Cooperating Counsel for Legal Voice and the Montana Human Rights Network.

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Experience

Experience

Patent Procurement and Portfolio Management

  • Represents large and small life sciences, pharmaceutical, medical device, and chemical industry companies and research institutions managing worldwide patent estates. Experience includes preparation and prosecution of U.S. and international patent applications, patent portfolio management, and strategic counseling.
  • Devised and implemented strategies for a multinational medical device and pharmaceutical company to maximize patent term adjustment, resulting in a key patent issuing with 1,019 days of additional patent term.
  • Prepares and prosecutes U.S. and foreign patents covering marketed products for several multinational life sciences and pharmaceutical companies.

Patent Opinion Practice

  • Provides non-infringement, freedom-to-operate, and invalidity opinions; product clearance analysis; due diligence investigations; and guidance regarding designing around patents.

Patent Litigation

  • Represented a medical device manufacturer in a patent infringement action. After the court dismissed the case with leave to amend and expedited expert discovery, our team successfully defeated a motion for preliminary injunction seeking to halt all sales of the accused product and won a stay of the litigation pending reexamination. The case subsequently settled.
  • Obtained permanent injunction and judgment on multiple counts of patent infringement, validity, and enforceability in a case involving claims for patent infringement, tortious interference, and unfair competition against an infringing competitor in the public safety space.
  • Represented a commercial property management company in defending patent infringement claims brought by a non-practicing entity in the U.S. District Court for the District of Delaware, resulting in a negotiated settlement.

Intellectual Property Transactions

  • Represented a private company in a $2 million divestiture of certain patent assets and associated technology to a multinational public company.
  • Represents various companies with negotiating and drafting a variety of agreements, including intellectual property licenses, asset purchase agreements, and settlement agreements.
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Honors

Honors & Activities

Professional Honors and Activities

  • Special Assistant Attorney General, Washington State Attorney General’s Office, 2014-present
  • Adjunct Professor, University of Washington School of Law, 2011-present
  • Recipient, Best Lawyers Under 40 Award, National Asian Pacific American Bar Association , 2018
  • Recipient, On the Rise – Top 40 Young Lawyers Award, American Bar Association, 2016
  • Recipient, Best LGBT Lawyers Under 40 Award, National LGBT Bar Association, 2016
  • Listed among Rising Stars (Intellectual Property, Intellectual Property Litigation), Washington Super Lawyers®, 2016-2018
  • Board of Directors, French American Chamber of Commerce - Pacific Northwest, 2018-present
  • Life Fellow, American Bar Foundation, 2016-present
  • Recipient, Washington LGBT Leadership Award, Washington Diversity Council, 2016
  • Board of Directors (2017), Asian Bar Association of Washington
  • Immediate Past President (2016-2017); President (2015-2016); President-Elect (2014-2015); Secretary (2012-2014); Board of Directors (2011-present), QLaw Association of Washington
  • Coach, University of Washington School of Law, AIPLA Giles Sutherland Rich Memorial Moot Court Competition
    • Winner and Best Appellate Brief, Western Regional Competition, 2014
    • Semi-Finalists, National Finals Competition, 2014
  • Cooperating Counsel / Pro Bono Attorney, Legal Voice, 2011-present
  • Member, American Intellectual Property Law Association (AIPLA)
  • Member, Washington State Patent Law Association (WSPLA)
  • Member, Foreign Direct Investment (FDI) Moot College of Arbitrators and Memorandum Judges
  • Member, Phi Lambda Upsilon Honorary Chemical Society
  • Chair, Life Sciences Practice Group, TerraLex
  • Best Respondent Brief, Skadden Arps Foreign Direct Investment International Moot Competition, 2008

Civic Activities

  • Board of Directors, Pacific Northwest Ballet’s Young Patrons Circle
  • Ex Officio Member, eQuality Advisory Council, Center For Children & Youth Justice
  • Alumni mentor, Theta Xi Fraternity, University of Washington (Upsilon Chapter)
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Insights & Presentations

Insights & Presentations

  • “Globalization or Glocalization? Cross-Border Marketing in Uncertain Times,” The 25th Annual Thomson Reuters Marketing Partner Forum, Rancho Palos Verdes, California, Jan. 2018
  • “Intellectual Property for Startups,” French-American Chamber of Commerce PNW, Seattle, Washington, May 2017
  • Speaker, Washington Diversity and Leadership Conference, Seattle, Washington, Nov. 2016
  • Coauthor, Business Law Practice, Part 5: Intellectual Property Considerations, Washington Lawyers Practice Manual, 2015
  • “Patent Protection: What Every Chinese Company Needs to Know to Protect Its Inventions Overseas,” The All China Biotech Conference & Exhibition, Nanjing, China, May 2014
  • “Core Legal Principles of IP,” Stoel Rives LLP Straight Talk Series, Seattle, Washington, May 2014
  • “Diversity and Mentorship in the Legal Profession,” Law and Corporate Affairs Department, Starbucks Coffee Company, Seattle, Washington, Mar. 2014
  • Coauthor, 2011 Washington Patent Report, www.stoel.com, 2012
  • Coauthor, 2010 Washington Patent Report, www.stoel.com, 2011
  • Coauthor, “Winning Memorandum for Respondent,” Yearbook on International Investment Law & Policy 2008-2009, 2009



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