Jamaica Potts Szeliga

Jamaica Szeliga is a Partner in the Intellectual Property group. With more than 20 years of experience, Ms. Szeliga prosecutes, manages, and oversees global patent portfolios as well as litigating patent and trade secret matters and providing counseling, opinion, and IP transactional services. Her clients range from international conglomerates to first-time inventors.

A registered Patent Attorney, Ms. Szeliga prosecutes patent applications in both the U.S. and abroad in a variety of technology areas. One focus is in biotechnology, pharmaceuticals, and other health-related industries, where Ms. Szeliga has pursued patents for clients relating to, e.g., gene editing, antibody therapies, digital health, medical devices and diagnostics, and supplements. Other key areas include consumer goods and fashion, with Ms. Szeliga prosecuting both utility and design patents in those fields.

As part of her practice, Ms. Szeliga also performs comprehensive IP audits, which evaluate how a company identifies patentable inventions and trade secrets and how those assets are protected. She advises on maximizing invention “capture,” improving patent strategy, strengthening trade secret controls, and also trains and coaches employees on IP issues.

Ms. Szeliga regularly provides freedom-to-operate and invalidity assessments, and drafts IP-related contracts and contract provisions such as those relating to licensing, co-development, confidentiality, and mergers and acquisitions. She further is an accomplished litigator with experience in patent litigation (both for utility and design patents) and trade secret litigation. A former clerk at the United States Court of Appeals for the Federal Circuit, she has led cases in district courts, in multi-district litigation, before the PTAB (IPRs and PGRs), and in TTAB oppositions, and has argued before the Federal Circuit and the Fourth Circuit.

Representative Experience

• Oversight of global patent prosecution and management of more than 150 applications for a gene editing company.
• Act as “outside” in-house IP counsel for certain clients, including prosecuting patents, reviewing and approving public disclosures, drafting IP contracts, overseeing trademark challenges, and assisting in the realization, protection, and commercialization of IP.
• Lead counsel in trade secret and breach of contract litigation matter relating to genetic databases.
• Lead counsel in four inter partes review (IPR) and one post grant review (PGR) proceedings, successfully challenging beverage company claims to sweet tea.
• Provided IP due diligence review for reps and warranties insurers on more than 120 mergers, acquisitions, and asset sales.
• Patent litigation counsel in matters involving medical devices, biologics, textiles, fashion and accessories, toys, and various mechanical products, including cases both pursuing and defending against design patent infringement claims.
• Representation of both pharmaceutical and generic companies in Hatch-Waxman patent litigation and advising companies on the Biologics Price Competition and Innovation Act.