Troy Groetken is a Shareholder, Board Member, and Executive Committee member at McAndrews. He has over 28 years of legal experience in the intellectual property field and more than 30 years of technical experience in the pharmaceutical, biotechnological, and chemical fields. He is recognized in IAM’s Strategy 300: The World’s Leading IP Strategists and Patent 1000: The World’s Leading Patent Professionals, and has been listed as one of the Best Lawyers in America since 2012.
As a registered U.S. patent attorney, Troy regularly counsels and is known globally as a “go-to” intellectual property attorney for Fortune 100 and 500 clients regarding complex intellectual property matters involving strategic global patent portfolio development, implementation, positioning, and enforcement. Troy also advises mid-sized to large corporate clients regarding strategic acquisition, divestiture, and licensing of core and non-core intellectual property assets on a global platform. In addition, he is recognized by the intellectual property community as a thought leader with respect to portfolio due diligence analyses, global portfolio coordination (e.g., coordination of complex U.S. reexamination or reissue proceedings with European, Asian and Australian appeals, cancellation, nullity, and/or opposition proceedings), and advanced U.S. Patent Office procedural issues (e.g., strategic use of IPR/PGR practice) to achieve proactive business-focused outcomes for his clients.
Troy counsels domestic and foreign clients on a broad range of technical disciplines in the chemical, pharmaceutical, and biotechnological arts. Areas include new drug entities (small-molecule, protein, recombinant, combinatorial technologies, assay, etc.), diagnostics, biological molecular technologies, API development and positioning, generic pharmaceuticals, biosimilars, pharmaceutical conjugates, vaccines, cancer therapeutics, CAR-T technologies, mRNA technologies, antibody technologies, surfactant technologies, agricultural compositions, food-based technologies, animal compositions, gellants, polyols, lubricants, coatings, elastomers, sealants, adhesives, construction products (interior and exterior), biocides, medical devices, drug delivery formulations and systems, drug storage and logistical systems, including RFID technologies, laundry and cleaning products, inorganic and organic synthesis products, pharmaceutical supplements, Big Data and artificial intelligence (within the pharmaceutical, life science, precision clinical therapy, and logistical intellectual property spaces), personal care and cosmetic formulations, oil and gas technologies, alternative fuels, fuel cells, and renewable energies, among others.
Prior to practicing patent law, Troy worked as a clinical consultant pharmacist, supervised drug research programs in coordination with the FDA, evaluated drug-management protocols, and performed drug-treatment trials on behalf of various hospitals, research institutions, and drug companies.
EDUCATION
John Marshall Law School, LL.M., Intellectual Property Law, Honors
Drake University Law School, J.D., cum laude
Drake University, College of Pharmacy, B.S., Pharmacy, cum laude, Rho Chi
BAR ADMISSIONS/REGISTRATIONS
Illinois
Iowa
United States Supreme Court
Federal Circuit Court of Appeals
District Courts for the Northern District of Illinois and the Southern District of Iowa
U.S. Patent and Trademark Office
Registration Certificate (Roll of Patent Agents)
Canadian Patent Office
Education
John Marshall Law School, LL.M., Intellectual Property Law, Honors
Drake University Law School, J.D., cum laude
Drake University, College of Pharmacy, B.S., Pharmacy, cum laude, Rho Chi
Practices
Design Rights
IP Transactions
IP Litigation
Patent Prosecution
Post-Grant Practice
Trademarks & Copyrights
Bar Admissions/Registrations
Illinois
Iowa
United States Supreme Court
Federal Circuit Court of Appeals
District Courts for the Northern District of Illinois and the Southern District of Iowa
U.S. Patent and Trademark Office
Registration Certificate (Roll of Patent Agents)
Canadian Patent Office
Industries
Chemical
Life Sciences
Pharmaceuticals
Related Experience
Licensed pharmacist, Illinois, Iowa and Michigan
Honors & Awards
IAM Strategy 300, 2022 – Present
IAM Patent 1000: The World’s Leading Patent Professionals, 2022- Present
The Best Lawyers in America, 2012 – Present
IP Star: Managing Intellectual Property, 2022 – Present
Lawyer of the Year, USA – Patents, Lawyer Monthly, 2016
Legal Elite Award Winner, 2016
Rising Star, Illinois Super Lawyers independent survey, 2008, 2009
40 Illinois Attorneys Under Forty to Watch, Law Bulletin Publishing Company, selected by peers in 2009
Member, Richard Linn Inn of Court
Representative Matters
WR Meadows, Inc. – Acquisition and Development of Trademark Portfolio for European Market for Precon and Mel-Roe Precon Products – 2025
Preferred Law Firm IP Provider for Danaher Corporation and several operating companies thereof, 2024-2025
Transition of IP Portfolio for KemPharm, Inc. to Zevra, Inc. with Rare Disease and Orphan Drug Focus, 2024-2025
Strategic Intellectual Property Assistance, Orange Book Listing, PTE extension and FDA Approval Support for rare disease drug, Arimoclomol – FDA approved 2024
WR Meadows, Inc. – Development of Innovation Program and new Innovation Center (2019 – present), Acquisition of Gemite® products and IP portfolio – 2021
BioNTech – Strategic IP U.S. positioning with respect to COVID-19 vaccines (2019 – present)
Beckman Diagnostics, Inc. – Strategic IP positioning of COVID-19 diagnostics (2019 – present)
KemPharm, Inc. – Portfolio development, U.S. commercial launch, and global licensing program of Azstarys® pharmaceutical product (2016 – present)
Chiesi Farmaceutici s.p.A. v. Mesoblast International Sárl, Patent No. 2298863 (05/03/2016) Subject: Mesenchymal stem cells
Desmond Mark Chapman v. Osiris Therapeutics, Inc., Case No. T 1147/15-3.3.08 (07/09/2015) Subject: Mesenchymal stem cells
Fatigue Fracture Technology, LLC v. Navistar, Inc., Case No. 15-cv-5667, (06/25/2015) Subject: Fracturing technology
Kovin Associates, L.P. v. Duo-Gard Industries, Inc., Case No. 15-cv-2058, (03/09/2015) Subject: Roofing technology
Polyguard Products, Inc. v. W R. Meadows, Inc. (02/28/11 – 03/2012) Subject: Sealant based product and process
Strawman Limited v. Osiris Therapeutics, Inc. (European Opposition) (2012) Subject: Joint Repair Using Mesenchymal Stem Cells
Shire LLC v. Travis C. Mickle, Ph.D. and KemPharm, Inc. (09/29/10 – 05/12/12) Subject: Pharmaceutical conjugates
Cognate Therapeutics Inc.; Harvey Vaughan John Adams v. Osiris Therapeutics, Inc. (European Opposition) (2008) Subject: Muscle regeneration using stem cells
Akzo Nobel v. Stepan Company (European Opposition) (2006)
Subject: Surfactant technology
Publications
Featured in “How Can Firms Avoid Falling Into GSK-Teva ‘Skinny Label’ Trap?” Generics Bulletin, September 6, 2021.
Quoted in “Arthrex Ruling Leaves Attys Eyeing USPTO for Guidance,” Law360, June 21, 2021.
A Conversation with Troy Groetken and Outsourced Pharma about “What Happens When IP is Redistributed? CDMOs Without Borders,” May 24, 2021.
Quoted in “Did You Vote to Give Your IP Away?” Outsourced Pharma, May 19, 2021.
Featured in “Why focusing on the quantity of pharma innovation is misleading,” Drug Discovery & Development, February 23, 2021.
Featured in “Why Big Tech is offering Biden help with COVID-19 vaccination,” Pharmaceutical Processing World, February 17, 2021.
“Three cases that changed the patent disclosure landscape of proteins,” Drug Discovery & Development, December 15, 2020.
“The Critical Importance of Patent Protection for Diagnostics in the COVID-19 Era,” MDDI, November 19, 2020.
“Rethinking the Way We Patent Diagnostics,” IP Watchdog, August 13, 2020.
Thought Leader: “Troy Groetken on Patents,” lawyer-monthly.com, LM77-16, p. 87, October 4, 2016.
“Inter Partes Review, Development and Procedures,” Today’s General Counsel, Vol. 12, No. 1, Feb/Mar 2015.
“An alternative litigation strategy: ADR + IPR,” Insidecounsel.com, March 26, 2014.
“Should the Supreme Court address claim construction in patent cases?” Insidecounsel.com, March 12, 2014.
“Sufficiency of disclosure and the great divide between the U.S. and Europe,” Insidecounsel.com, February 26, 2014.
“The perfect storm that led to the rise of design patents,” Insidecounsel.com, February 12, 2014.
“Can personalized medicine survive Prometheus?” Insidecounsel.com, January 29, 2014.
“Is Patent Reform, Round II a bad idea?” Insidecounsel.com, January 15, 2014.
“Using Patents as a Business Asset in Today’s Economy,” Life Science Leader, July 2011.
Presentations
Speaker and Program Creator, “Modern Ethics for In-house Counsel,” Tesla Corporation, Virtual Webinar to Company Legal In-house Membership, March 17, 2025
Moderator and Program Creator, “Ethical Considerations for In-house Counsel,” Consero’s Life Sciences Forum, Boston, MA, March 13, 2025
Speaker and Program Creator, “Intellectual Property Basics,” International Food Technologies, Virtual Webinar to Membership, January 14, 2025
Speaker and Program Creator, “Understanding the Impact of the FTC Non-Compete Rule,” Presented to Corning Legal Membership, Corning, Incorporated, Corning, NY, December 10, 2024
Moderator and Program Co-creator, “Mind the Gap: Between the US and UK Advocacy,” Richard Linn Inn of Court, Chicago, November 14, 2024
Speaker, “Artificial Intelligence and Precision Healthcare,” BIO International Convention 2022, San Diego, CA, June 15, 2022
Moderator, “Out of Monumental Challenges Come Substantial IP Opportunities,” Consero’s IP Virtual Forum for Life Sciences, December 7, 2021
Moderator, “Trade Secret Programs: From Setup to Enforcement,” Consero’s IP Virtual Forum for Life Sciences, December 5, 2021
Panel Leader, “Navigating the Life Sciences IP Landscape,” IPBC Connect Life Sciences Panel, September 29, 2021
Presenter, “Inflection Point: IP Innovation, Collaboration, and Enforcement at this Stage of the Pandemic,” Association of Medical Diagnostic Manufacturers (AMDM) Quarterly IVD Diagnostics Sector, June 22, 2021
Moderator, “Lessons from COVID on Innovation, Collaboration & Enforcement,” BIO Digital 2021, June 15, 2021
Moderator, “Discussing the Regulatory Climate in Light of the Pandemic,” Consero’s IP Virtual Forum for Life Sciences, June 7, 2021
“Looking Beyond the Pandemic,” January 27, 2021
Event Founder/Director, Sixth Annual Symposium on IP, “Critical Updates Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd, September 29, 2016
Moderator, “Practical Insights Regarding IPR and PGR Practice”
“Best Practices: PGR Procedures, U.S. and Foreign Venues” – 2016
Event Founder/Director, Fifth Annual Symposium on IP, “Practical Insights Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd, June 11, 2015
“Strategic U.S. Patent Portfolio Development,” IP Management Seminar, ZSP Patentanwälte PartG mbB, Munich, Germany, March 19, 2015
“Best Practices Regarding Patent Prosecution Under 35 U.S.C. § 101,”S. and Foreign Venues – 2015
“Best Practices: IPR Procedures,”S. and Foreign Venues – 2015
“ITC litigation in the USA,” 2014 Global IP & Innovation Summit, Shanghai, China, September 3, 2014
Event Founder/Director, Fourth Annual Symposium on IP, “Critical Updates Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd, July 24, 2014
Moderator, “Practical Insights Regarding IPR and PGR Practice”
“Best Practices With Respect to U.S.C. § 112,”S. and Foreign Venues – 2014
Event Founder/Director, Third Annual Symposium on IP, “Strategic and Practical Approaches to Intellectual Property: Where Law and Business Intersect,” McAndrews, Held & Malloy, Ltd, October 17, 2013
Panelist, “AIA: To Litigate at the Patent Office or Not”
“Best Practices: Controlling Litigation Costs,”S. and Foreign Venues – 2013
Event Founder/Director, Second Annual Symposium on IP, “Developments In US and EP Intellectual Property Practice and Law,” McAndrews, Held & Malloy, Ltd, July 26, 2012
“U.S. Patent Reform: A Major Update,” Numerous U.S. and European venues – October-November 2011 and May 2012
“KSR – Practical Approaches,” American Intellectual Property Law Association (AIPLA) Roadshow – June 23, 2011
“Biosimilars Legislation in the U.S.,” S. and EPO Patent Law Update Symposium, Chicago, May 19, 2011
“Biosimilars Legislation in the U.S.,” U.S. and EPO Patent Law Update Symposium, Munich, May 3, 2011
Professional & Community Involvement
American Intellectual Property Law Association (AIPLA)
IAM Patent 1000: The World’s Leading Patent Professionals, 2022- Present
The Best Lawyers in America, 2012 – Present
IP Star: Managing Intellectual Property, 2022 – Present
Lawyer of the Year, USA – Patents, Lawyer Monthly, 2016
Legal Elite Award Winner, 2016
Rising Star, Illinois Super Lawyers independent survey, 2008, 2009
40 Illinois Attorneys Under Forty to Watch, Law Bulletin Publishing Company, selected by peers in 2009
Member, Richard Linn Inn of Court
WR Meadows, Inc. – Acquisition and Development of Trademark Portfolio for European Market for Precon and Mel-Roe Precon Products – 2025
Preferred Law Firm IP Provider for Danaher Corporation and several operating companies thereof, 2024-2025
Transition of IP Portfolio for KemPharm, Inc. to Zevra, Inc. with Rare Disease and Orphan Drug Focus, 2024-2025
Strategic Intellectual Property Assistance, Orange Book Listing, PTE extension and FDA Approval Support for rare disease drug, Arimoclomol – FDA approved 2024
WR Meadows, Inc. – Development of Innovation Program and new Innovation Center (2019 – present), Acquisition of Gemite® products and IP portfolio – 2021
BioNTech – Strategic IP U.S. positioning with respect to COVID-19 vaccines (2019 – present)
Beckman Diagnostics, Inc. – Strategic IP positioning of COVID-19 diagnostics (2019 – present)
KemPharm, Inc. – Portfolio development, U.S. commercial launch, and global licensing program of Azstarys® pharmaceutical product (2016 – present)
Chiesi Farmaceutici s.p.A. v. Mesoblast International Sárl, Patent No. 2298863 (05/03/2016) Subject: Mesenchymal stem cells
Desmond Mark Chapman v. Osiris Therapeutics, Inc., Case No. T 1147/15-3.3.08 (07/09/2015) Subject: Mesenchymal stem cells
Fatigue Fracture Technology, LLC v. Navistar, Inc., Case No. 15-cv-5667, (06/25/2015) Subject: Fracturing technology
Kovin Associates, L.P. v. Duo-Gard Industries, Inc., Case No. 15-cv-2058, (03/09/2015) Subject: Roofing technology
Polyguard Products, Inc. v. W R. Meadows, Inc. (02/28/11 – 03/2012) Subject: Sealant based product and process
Strawman Limited v. Osiris Therapeutics, Inc. (European Opposition) (2012) Subject: Joint Repair Using Mesenchymal Stem Cells
Shire LLC v. Travis C. Mickle, Ph.D. and KemPharm, Inc. (09/29/10 – 05/12/12) Subject: Pharmaceutical conjugates
Cognate Therapeutics Inc.; Harvey Vaughan John Adams v. Osiris Therapeutics, Inc. (European Opposition) (2008) Subject: Muscle regeneration using stem cells
Akzo Nobel v. Stepan Company (European Opposition) (2006)
Subject: Surfactant technology
Featured in “How Can Firms Avoid Falling Into GSK-Teva ‘Skinny Label’ Trap?” Generics Bulletin, September 6, 2021.
Quoted in “Arthrex Ruling Leaves Attys Eyeing USPTO for Guidance,” Law360, June 21, 2021.
A Conversation with Troy Groetken and Outsourced Pharma about “What Happens When IP is Redistributed? CDMOs Without Borders,” May 24, 2021.
Quoted in “Did You Vote to Give Your IP Away?” Outsourced Pharma, May 19, 2021.
Featured in “Why focusing on the quantity of pharma innovation is misleading,” Drug Discovery & Development, February 23, 2021.
Featured in “Why Big Tech is offering Biden help with COVID-19 vaccination,” Pharmaceutical Processing World, February 17, 2021.
“Three cases that changed the patent disclosure landscape of proteins,” Drug Discovery & Development, December 15, 2020.
“The Critical Importance of Patent Protection for Diagnostics in the COVID-19 Era,” MDDI, November 19, 2020.
“Rethinking the Way We Patent Diagnostics,” IP Watchdog, August 13, 2020.
Thought Leader: “Troy Groetken on Patents,” lawyer-monthly.com, LM77-16, p. 87, October 4, 2016.
“Inter Partes Review, Development and Procedures,” Today’s General Counsel, Vol. 12, No. 1, Feb/Mar 2015.
“An alternative litigation strategy: ADR + IPR,” Insidecounsel.com, March 26, 2014.
“Should the Supreme Court address claim construction in patent cases?” Insidecounsel.com, March 12, 2014.
“Sufficiency of disclosure and the great divide between the U.S. and Europe,” Insidecounsel.com, February 26, 2014.
“The perfect storm that led to the rise of design patents,” Insidecounsel.com, February 12, 2014.
“Can personalized medicine survive Prometheus?” Insidecounsel.com, January 29, 2014.
“Is Patent Reform, Round II a bad idea?” Insidecounsel.com, January 15, 2014.
“Using Patents as a Business Asset in Today’s Economy,” Life Science Leader, July 2011.
Speaker and Program Creator, “Modern Ethics for In-house Counsel,” Tesla Corporation, Virtual Webinar to Company Legal In-house Membership, March 17, 2025
Moderator and Program Creator, “Ethical Considerations for In-house Counsel,” Consero’s Life Sciences Forum, Boston, MA, March 13, 2025
Speaker and Program Creator, “Intellectual Property Basics,” International Food Technologies, Virtual Webinar to Membership, January 14, 2025
Speaker and Program Creator, “Understanding the Impact of the FTC Non-Compete Rule,” Presented to Corning Legal Membership, Corning, Incorporated, Corning, NY, December 10, 2024
Moderator and Program Co-creator, “Mind the Gap: Between the US and UK Advocacy,” Richard Linn Inn of Court, Chicago, November 14, 2024
Speaker, “Artificial Intelligence and Precision Healthcare,” BIO International Convention 2022, San Diego, CA, June 15, 2022
Moderator, “Out of Monumental Challenges Come Substantial IP Opportunities,” Consero’s IP Virtual Forum for Life Sciences, December 7, 2021
Moderator, “Trade Secret Programs: From Setup to Enforcement,” Consero’s IP Virtual Forum for Life Sciences, December 5, 2021
Panel Leader, “Navigating the Life Sciences IP Landscape,” IPBC Connect Life Sciences Panel, September 29, 2021
Presenter, “Inflection Point: IP Innovation, Collaboration, and Enforcement at this Stage of the Pandemic,” Association of Medical Diagnostic Manufacturers (AMDM) Quarterly IVD Diagnostics Sector, June 22, 2021
Moderator, “Lessons from COVID on Innovation, Collaboration & Enforcement,” BIO Digital 2021, June 15, 2021
Moderator, “Discussing the Regulatory Climate in Light of the Pandemic,” Consero’s IP Virtual Forum for Life Sciences, June 7, 2021
“Looking Beyond the Pandemic,” January 27, 2021
Event Founder/Director, Sixth Annual Symposium on IP, “Critical Updates Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd, September 29, 2016
Moderator, “Practical Insights Regarding IPR and PGR Practice”
“Best Practices: PGR Procedures, U.S. and Foreign Venues” – 2016
Event Founder/Director, Fifth Annual Symposium on IP, “Practical Insights Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd, June 11, 2015
“Strategic U.S. Patent Portfolio Development,” IP Management Seminar, ZSP Patentanwälte PartG mbB, Munich, Germany, March 19, 2015
“Best Practices Regarding Patent Prosecution Under 35 U.S.C. § 101,”S. and Foreign Venues – 2015
“Best Practices: IPR Procedures,”S. and Foreign Venues – 2015
“ITC litigation in the USA,” 2014 Global IP & Innovation Summit, Shanghai, China, September 3, 2014
Event Founder/Director, Fourth Annual Symposium on IP, “Critical Updates Into The Ever-Changing Landscape of Patentability and Patent Enforcement,” McAndrews, Held & Malloy, Ltd, July 24, 2014
Moderator, “Practical Insights Regarding IPR and PGR Practice”
“Best Practices With Respect to U.S.C. § 112,”S. and Foreign Venues – 2014
Event Founder/Director, Third Annual Symposium on IP, “Strategic and Practical Approaches to Intellectual Property: Where Law and Business Intersect,” McAndrews, Held & Malloy, Ltd, October 17, 2013
Panelist, “AIA: To Litigate at the Patent Office or Not”
“Best Practices: Controlling Litigation Costs,”S. and Foreign Venues – 2013
Event Founder/Director, Second Annual Symposium on IP, “Developments In US and EP Intellectual Property Practice and Law,” McAndrews, Held & Malloy, Ltd, July 26, 2012
“U.S. Patent Reform: A Major Update,” Numerous U.S. and European venues – October-November 2011 and May 2012
“KSR – Practical Approaches,” American Intellectual Property Law Association (AIPLA) Roadshow – June 23, 2011
“Biosimilars Legislation in the U.S.,” S. and EPO Patent Law Update Symposium, Chicago, May 19, 2011
“Biosimilars Legislation in the U.S.,” U.S. and EPO Patent Law Update Symposium, Munich, May 3, 2011
American Intellectual Property Law Association (AIPLA)