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Huw Jones Huw R. Jones, JD, MBA

Of Counsel
Tucson, Arizona office

Phone: 520.882.7623
Fax: 520.882.7642
Email: hjones@hayes-soloway.com

Areas of Practice:

 

 

Huw Jones, a senior IP attorney with 18 years’ experience in law firms and in corporate legal departments, concentrates his practice in counseling clients regarding the procurement and enforcement of patents, licensing of intellectual property, trademark usage and procurement and patent litigation. Prior to joining the firm, he started two in-house intellectual property departments, the most recent being for Ventana Medical Systems, Inc., a diagnostic company where he was the Senior Director of Intellectual Property. Mr. Jones built and managed a legal department including four legal professionals and support staff, with full budget responsibility.

Professional Experience: Mr. Jones started his career first as an Associate Patent Attorney with the law firm of Allegretti, Witcoff, Newitt & McAndrews (Chicago), and then as an Associate at Sterne, Kessler, Goldstein & Fox (Washington, D. C.). He began his in-house career as assistant Patent Counsel at Millipore Corporation, and moved to its spin-out Waters Corporation as the sole in-house counsel where he set up the legal function and assisted with Waters’ 1994 IPO. In 1996 Mr. Jones moved to the Pharmaceuticals Division of Bayer Corporation where he became responsible for the IP affairs of the Biological Products Division. In 1999 he founded the Legal Department for Ventana Medical Systems, and was on the company’s Executive Committee. Mr. Jones established the in-house Patent Committee and guided the development of Ventana’s extensive patent portfolio, and assisted through four separate patent litigations and numerous business development activities, including in-licensing a majority of the company’s in-licensed antibody reagents. In 2008 Hoffman la Roche purchased the company for $3.4 B. Mr. Jones is a Certified Licensing Professional, and garnered the Licensing Executives Society’s “CLP” designation in the inaugural class of 2008.

Representative Technologies: Mr. Jones has prosecuted patent applications, performed patent landscape analysis, or rendered opinions of patentability, infringement or validity in a number of technologies including the following:

  • Instrumentation and software including automated diagnostic testing systems, mass spectrometers, liquid chromatographic pumps, electrospray ionization ion beam sources, MALDI-TOF mass spectrometers and ancillary equipment
  • Reagents and consumables for tissue-based diagnostic testing including antibodies, DNA probes, Special Stain reagents, and Fluorescent In situ Hybridization (FISH) probes, including Quantum Dots
  • Small-molecule drugs and biopharmaceuticals, biological products derived from serum and plasma and recombinant proteins/peptides
  • Companion diagnostics for oncology-based therapeutics
  • Medical devices including balloon catheters

Bar Admissions:

  • State Bar of Illinois, 1990
  • District of Columbia, 1992
  • United States Patent and Trademark Office, 1990
  • United States Federal Court, Northern District of Illinois, 1990

Education:

  • J.D., Franklin Pierce Law Center, Concord, NH, 1989
  • B.A. Bowdoin College, Brunswick, ME, Chemistry, 1981
  • M.B.A. candidate, University of Arizona, 2009

Published Works:

  • Jones, Huw R., Wilks, Paul A., "The CO2 Laser and Infrared Spectroscopy," American Laboratory, March, 1982.

Teaching/Lectures:

  • Faculty Presenter, Arizona State Bar Convention, June 19, 2008, "Intellectual Property Contracts".
  • Chairman and Speaker, BIOZONA 2008 Panel on "2007 Patent Reform", April 8, 2008.
  • Panel participant, First Annual Quarles & Brady Biotechnology Forum, University of Arizona College of Law, "The Experimental Use of Exception", February 12, 2004.
  • Presentation at BIO-Southern Arizona, Southwest Biopartnering Conference & Exposition, “Cooperative Research and Technology Act (CREATE) of 2004”, April 6, 2004.

National Associations/Professional Memberships

  • American Intellectual Property Law Association (1990-)
  • Association of Corporate Counsel (1994-)
  • Licensing Executives Society (2000-)

  • Diagnostics, instrumentation and reagents
  • Pharmaceuticals
  • Medical devices
  • Licensing and technology transfer
  • Patent landscaping, Freedom-to-operate opinions
  • Small company IP consulting
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