Mythili Markowski, Ph.D.
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Mythili Markowski, Ph.D.

Associate

Alexandria, VA
 
 
 

Dr. Markowski focuses her practice on intellectual property law, where she has experience in IP procurement, counseling, opinions, and competitive strategy. She has extensive experience in researching, drafting, and prosecuting patent applications in the United States and worldwide.

Mythili’s IP district court litigation experience includes a special emphasis on pharmaceutical patent litigation under the Hatch-Waxman Act. Mythili has extensive pre-filing counseling experience that includes evaluating innovator IP portfolios from a generic perspective. She has drafted hundreds of invalidity, non-infringement, and freedom-to-operate opinions related to small molecule therapeutic compounds, pharmaceutical formulations, crystalline polymorphs, enantiomers, solvates, salts, dosage forms (including oral, topical, ophthalmic, nasal, and parenteral dosage forms), pharmacokinetics, pharmacodynamics, biologics, methods of production, and methods of use/treatment. Whether it is a question of certification filing strategy, the possibility of designing around an innovator’s product, the impact of a use code or data exclusivity, or patent term extension, Mythili is able to assist her clients with assessing all pre-filing options. Her post-filing experience includes all aspects of Hatch-Waxman district court litigation, from answering a complaint to drafting invalidity and non-infringement contentions, motion briefs, summary judgment briefs and statements of material facts, to discovery, to settlement. She has extensive experience in the recruitment, management, and deposition of litigation experts.

Mythili has also been associated with a number of inter partes review and patent interference matters before the Patent Trial and Appeal Board on behalf of Petitioners and Patent Owners. A number of these inter partes review proceedings were co-pending with district court action. Mythili’s inter partes review experience includes involvement in all phases of the review proceedings.

Related to all of these, Mythili also maintains an IP counseling practice which incorporates IP due diligence, as well as preparing all types of IP opinions, including patentability, freedom-to-operate, invalidity, and noninfringement opinions. She has experience in tailoring IP protection plans for clients who balance trade secrets with patent portfolios. Mythili strives to assist her clients with identifying the most advantageous intellectual property avenues to pursue. Mythili also works with clients to develop patent portfolios that avoid or overcome the intellectual property of competitors. Finally, she works diligently with small inventor clients to keep patent prosecutions costs low.

Mythili’s graduate research was primarily focused on determining the three- dimensional structure of a protein involved in axon guidance, MICAL

(Molecule Interacting with Cas-L). After obtaining structural data pertaining to this protein, she was able to establish spectrophotometric assays to monitor MICAL's catalytic activity. The protein studied is critical for proper nerve path-finding in the embryonic and adult nervous systems. Her technical knowledge also includes molecular biology, protein biochemistry, powder X-ray crystallography, enzymology, neuroscience, biotechnology, nanotechnology, immunology, and cell biology.