Kirsten A. Grüneberg, Ph.D., is a partner in the firm's Opinions and Counseling, Post-Grant Patent, Chemical Patent Prosecution, and Pharmaceutical/Medical Devices practice groups. As a former senior research scientist and chemist, Dr. Grüneberg is especially experienced at representing European and Japanese chemical, biotechnical and pharmaceutical companies. She is a native German speaker and regularly visits clients in Europe to update them about the latest developments in U.S. patent law and to work closely with them on selected high profile projects.
Dr. Grüneberg focuses her practice on all aspects of client counseling, due diligence, non-infringement and invalidity opinions, intellectual property portfolio management and development, as well as ex parte and inter partes reexamination. Dr. Grüneberg has extensive experience in writing and prosecuting patent applications and arguing appeals before the Board of Patent Appeals and Interferences (BPAI) of the United States Patent and Trademark Office (USPTO). Dr. Grüneberg also has significant experience with IP issues in connection with mergers and acquisitions in the U.S., Germany, Switzerland and China.
Dr. Grüneberg is a contributor to the 2013 treatise entitled Post-Grant Proceedings Before the Patent Trial and Appeal Board, published by Practicing Law Institute. The treatise guides readers through the process of initiating a post-grant proceeding, taking discovery, seeking sanctions, proposing and opposing claim amendments, effectively advocating at the oral hearing, appealing to the Federal Circuit, and handling a wide array of issues involving co-pending district court litigation.
After receiving her Ph.D. in organic chemistry, magna cum laude, from the Technische Universität Berlin in Germany, Dr. Grüneberg was awarded a Lynen-Fellowship from the Alexander von Humboldt Foundation in Germany. This fellowship was to perform research during a three year period at the Center for Bio/Molecular Science and Engineering of the U.S. Naval Research Laboratory. She also worked as a senior scientist at Geo-Centers, Inc./U.S. Naval Research Laboratory and as a research scientist at the Max-Planck-Institute of Colloids and Interfaces in Berlin. Dr. Grüneberg received her Masters of Science in organic chemistry, summa cum laude, and her Bachelors of Science in chemistry/chemical engineering, magna cum laude, from the E.-M.-Arndt-University in Germany.
Dr. Grüneberg has published more than 20 papers in the areas of liquid crystals, display technology, organic thin films, polymers, surfactants, and antimicrobial materials. She has been an invited speaker regarding her research at international conferences in the U.S., Japan, Germany, Italy, Switzerland and South Korea, and is an inventor on several U.S. and foreign patents.
With a law degree from the George Washington University School of Law, Dr. Grüneberg is admitted to the Virginia State Bar and is registered to practice before the U.S. Patent and Trademark Office. She is admitted to practice before the Court of Appeals for the Federal Circuit, the U.S. Court of Appeals for the Fourth Circuit and the U.S. District Court for the Eastern District of Virginia.
Dr. Grüneberg's association memberships include the American Bar Association, Vereinigung von Fachleuten des Gewerblichen Rechtsschutzes - VPP (Germany), LES Society Germany, the American Chemical Society, the Society for Information Display, the International Society for Optical Engineering, and the Alexander von Humboldt Association of America.
Dr. Grüneberg contributes to the firm’s Patents Post-Grant Law Blog, providing insights and commentary on existing and proposed post-grant options, trends, practice tips and news relating to patent reexamination, reissue and the new post-grant procedures introduced by the Leahy Smith America Invents Act.
- George Washington University School of Law (J.D.)
- Technische Universität Berlin, Germany (Ph.D., magna cum laude)
- Organic Chemistry
- E-M-Arndt-Universität, Germany (M.S., magna cum laude)
- Organic Chemistry
- E-M-Arndt-Universität, Germany (B.S., magna cum laude)
- Chemistry/Chemical Engineering
- Registered to practice before the U.S. Patent and Trademark Office
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Fourth Circuit
- U.S. District Court for the Eastern District of Virginia
- Counseling & Strategic Advice
- Utility Patent Procurement & Prosecution
- PTAB Proceedings
- IP Transactions
- American Bar Association
- Vereinigung von Fachleuten des Gewerblichen Rechtsschutzes - VPP (Germany)
- Licensing Executives Society Deutsche Landesgruppe e. V.
- Alexander von Humboldt Association of America
- American Chemical Society
- International Society for Optical Engineering
- Society for Information Display
- Lynen-Fellow, Alexander von Humboldt Foundation (1994-1997)
- Intellectual Asset Management (IAM) Patent 1000: The World's Leading Patent Practitioners, named to its list of the top 1000 patent attorneys in the world; selected as one of the top practitioners in the Washington, D.C. Metro Area (2016)