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Anneliese S. Mayer

Partner

Minneapolis

150 South Fifth Street, Suite 2200

Minneapolis, MN 55402

amayer@merchantgould.com

D: 612.371.5339

Contact My Assistant

Mary Peterson

MPeterson@merchantgould.com

D: 612.371.5204

Practices

Chemical & Life Sciences Licensing Trade Secret IP Due Diligence

Industries

Industrial Chemistry Manufacturing Pharmaceuticals

Education

Marquette University Law School
J.D., 2002

College of St. Benedict
B.A. Chemistry, 1999

Bar and Court Admissions

U.S. District Court for the District of Minnesota, 2010
U.S. Patent and Trademark Office, 2003
Wisconsin State Bar, 2002
Minnesota State Bar, 2002

Professional Affiliations

American Intellectual Property Law Association
Minnesota Intellectual Property Law Association
Licensing Executives Society

Publications & Speaking

Quoted, Selling overseas? Know your intellectual property rights, Minnesota Business, October 2018

Instructor, IP Management 7: Biotechnological/Pharmaceutical Licensing, CASRIP Patent and Intellectual Property Law and Practice Summer Institute, July 27, 2016

Panelist, IP Provisions in Employment: Contracts Protecting the Company’s Best Assets on the Front End, December 16, 2015

Panelist, Fundamental Intellectual Property Law and Related Restrictive Covenants, ABA 8th Annual Labor and Employment Law Conference, Los Angeles, CA, November 6, 2014

Panelist, IP Provisions in Employment Contracts, Midwest IP Institute, Minnesota CLE, September 26, 2013

Panelist, IP Issues in Contracts, Minnesota CLE, June 12, 2013

Panelist, IP Issues in Employment Contracts: Protecting the Company's Best Assets on the Front End, Minnesota CLE, 2013

Presenter, Collaboration Agreements to Support Open Innovation, LES Minnesota Chapter meeting, February 19, 2013

Presenter, Practical Considerations for Development Agreements, LES Minnesota Chapter Meeting, February 9, 2010

Presenter, Your IP Portfolio, MHTA CEO Roundtable, February 5, 2010

With seven years' experience as in-house counsel for a Fortune 500 company, Anneliese approaches her clients' legal projects with the end business goal in mind. Her patent prosecution experience includes working with inventors from around the world on pre-drafting strategy through appeals before the Board of Patent Appeals and Interferences and opposition strategy before the European Patent Office. She has facilitated multimillion-dollar license agreements, as well as confidentiality and development agreements.

Anneliese’s litigation experience includes working on patent, trademark, and trade secret litigation teams at various stages of the litigation process from pre-filing due diligence through trial. She has also advised clients on overall IP strategy, best practices and education, freedom to operate, infringement and invalidity opinions, and due diligence and patent portfolio analyses for acquisitions and licensing opportunities.

She has worked in a wide range of technical areas, including chemical, mechanical, biological, food science, and software and business methods.

Anneliese serves as a volunteer attorney for the Children's Law Center of Minnesota. She enjoys hiking with her family, cooking, and listening to music.

Representative Cases

Represented a prison inmate pro bono against a prison guard for violation of 42 U.S.C. § 1983. Part of the trial team in a three day jury trial in the Western District of Wisconsin.

Represented industrial chemical Fortune 500 company in patent litigation against competitor. Resolved case with an injunction against the competitor’s future use and admission of patent validity and enforceability.

Represented generic pharmaceutical companies in Hatch-Waxman litigation as a member of the trial team in bench trials in the District of Delaware and the District of New Jersey. The patents were either invalidated or not infringed.

Represented a Fortune 500 company in trade secret litigation against former employees. Obtained a jury verdict of willful and malicious trade secret misappropriation and breach of the employment agreements.

Represented a Fortune 500 company in patent litigation against a competitor for infection prevention technology. The case settled favorably immediately before trial.

Representative Projects

Negotiated technology transfer and license agreements granting rights of newly acquired sensor IP to a number of start-up and smaller organizations.

Negotiated long-term development agreements with international chemical and biological raw material suppliers.

Negotiated project-specific development agreements with global machine and packaging companies.

Drafted intercompany agreements moving intellectual property to one corporate entity and licensing the use of the intellectual property to the operating entities of the organization around the world.