A partner in Venable’s patent group, Toni Herbert represents U.S. and international clients in every stage of IP development. She has significant experience in IP auditing and due diligence, patent litigation, licensing and technology transfer, and corporate issues related to drug development. Fortune 500 companies seek her advice regarding multibillion dollar strategic acquisitions that are central to their plan for continued growth and innovation in the pharmaceutical industry.

Ms. Herbert works directly with clients to help identify patentable inventions and develop successful IP protection strategies. She has overseen the preparation and prosecution of numerous patent applications before the U.S. Patent and Trademark Office and served as lead counsel in interference proceedings. Ms. Herbert also has significant experience helping clients position themselves to avoid or prevail in litigation.

A graduate of the University of Colorado at Boulder with a degree in chemistry and biochemistry and the University of Baltimore School of Law, Ms. Herbert was a founding partner of the IP firm Shanks and Herbert.

Significant Matters

• Advised a start-up athletic company to establish an IP portfolio protecting its product line and in licensing the product to a major international consumer protection company.
• Defended a subsidiary of the world’s largest research-based pharmaceutical company regarding an alleged infringement of patents concerning Hepatitis C virus (HCV) technology, brought by a multinational biotechnology firm.
• Defended a multibillion dollar manufacturer in a patent infringement case involving marine stern drives.
• Represented an S&P 500 chemical company in a declaratory judgment action brought by an American aerospace manufacturing company relating to patents on polymeric compositions.
• Represented a small U.S. company in patent infringement litigation concerning tissue technology.
• Represented one of the world’s largest pharmaceutical companies in evaluating a potential multibillion dollar acquisition of a European biotechnology company.

Activities