Michelle Hon Donovan practices in the area of intellectual property law, including trademark, copyright and patent practice. Ms. Donovan has experience in patent and trademark prosecution and licensing. Ms. Donovan also focuses her practice on litigating intellectual property matters, including patent, copyright, trademark, and unfair competition. She also handles matters concerning acquisitions and disputes of domain names, including successfully handling domain name and cybersquatting disputes under ICANN's Uniform Dispute Resolution Policy.

Prior to entering law school, Ms. Donovan was a research assistant in biochemistry and molecular biology at the Ron Evans Gene Expression Laboratory of the Salk Institute. She was also involved in the Salk Institute Educational Outreach program, educating elementary and middle school students about molecular biology.

Ms. Donovan is a 2004 cum laude graduate of the University of San Diego School of Law, where she was Student Comment Editor of the San Diego International Law Journal and elected to the Order of the Coif. Ms. Donovan externed with Magistrate Judge Ruben B. Brooks in the United States District Court, Southern District of California. She is a graduate of the University of Minnesota (B.S., Genetics and Cell Biology).

Representative Matters

Trademark Prosecution

• Represented a variety of clients in the biotechnology and pharmaceutical industries to prepare and prosecute patent applications
• Represented clients in the prosecution and defense of oppositions and cancellation actions filed before the Trademark Trial and Appeal Board
• Filed appeal of refusal of registration before the Trademark Trial and Appeal Board

Licensing and Agreements

• Represented manufacturer in licensing its trademarks and copyrights in connection with the resale of its manufactured goods in various retail establishments
• Represented manufacturer with international distribution agreements
• Represented California college in licensing curriculum and trademarks to third-party schools
• Represented multiple clients with the purchase of domain names
• Represented franchisor with software development and licensing agreements
• Non-disclosure agreements

Intellectual Property Litigation

• Represented a California college in a trademark infringement action. A direct competitor was using the client's trademarks in the meta data of its webpage. We obtained consent judgment of infringement and payment of damages.
• Represented nationwide staffing corporation in a trademark infringement action. Assisted client in bringing an action to protect its registered trademark; obtained settlement where defendant agreed to change its name and pay damages.
• Represented Las Vegas casino and resort sued by lighting designer for copyright infringement. We obtained summary judgment of non-infringement.
• Represented a pharmaceutical research institute sued by biotechnology company for patent infringement of imaging method patents. We obtained summary judgment of non-infringement.
• Represented multiple educational institutions in connection with the misappropriation of the schools' name in connection with internet scam websites and degree mills. We assisted the clients in obtaining registered trademarks and pursuing those who misappropriated our clients' trademarks through arbitration under the Uniform Domain-Name Dispute Resolution Policy.

General Litigation

• Defended a nationally-accredited college in an alleged sexual harassment and retaliation claim by a student. The student dismissed her claims during the arbitration hearing following an aggressive investigation and cross-examination.

Patent Prosecution

• Represented a variety of clients in the prosecution, registration and maintenance of the client's trademarks.

Areas of Practice

• Litigation
• Intellectual Property

Admissions

• California
• U.S. Patent and Trademark Office
• U.S. District Court for the Central District of California
• U.S. District Court for the Northern District of California
• U.S. District Court for the Southern District of California
• U.S. District Court for the Central District of Illinois
• U.S. Court of Appeals for the Ninth Circuit
• U.S. Court of Appeals for the Federal Circuit

Education

• University of San Diego School of Law, J.D., cum laude, 2004
  Order of the Coif
  Comments Editor, San Diego International Law Journal
• University of Minnesota, B.S., Genetics and Cell Biology, 1999

Other Experience

• Buchanan Ingersoll
  - Associate, 2004-2005
  - Summer Associate, 2003
• The Honorable Ruben B. Brooks, Federal District Court, Southern District of California
  - Extern, 2004
• The Salk Institute, Ron Evans Gene Expression Laboratory
  - Research Assistant, 1999-2001
• Duane Morris LLP
  - Associate, 2005-present

Professional Activities

• Lawyers Club
• Athena
• State Bar of California
• San Diego Bar Association
• American Bar Association
• San Diego Intellectual Property Association
• American Intellectual Property Association
• J. Clifford Wallace American Inn of Court

Civic and Charitable Activities

• Mama's Kitchen, San Diego, California. Board of Directors (2009-present); Volunteer (2007-present): Non-profit organization, providing hot meals to persons suffering from HIV and cancer
• Lilith's Hands, San Diego, California. Founder & President (2001-2002): Organized and promoted charity concert to benefit women in the community, including sexual assault and domestic violence programs

Publications

• Shi Y, Hon M, Evans RM., The peroxisome proliferator-activated receptor delta, an integrator of transcriptional repression and nuclear receptor signaling, Proc. Natl. Acad. Sci. U.S.A. 2002 Mar 5;99(5):2613-8.
• Shi Y, Downes M, Xie W, Kao HY, Ordentlich P, Tsai CC, Hon M, Evans RM., Sharp, an inducible cofactor that integrates nuclear receptor repression and activation, Genes Dev. 2001 May 1;15(9):1140-51.

Speaking Engagements

• Speaker, "Internet Highway Robbery: Protect Your Domain, Trademarks, & Copyrights from Cyberthieves," 2008 CCA Annual Convention
• Speaker, "Katie Bar The Door! Protecting Yourself From Privacy Problems & Internet Scoundrels," 2008 AACS Spring Management Conference
• Speaker, "Proprietary Information, Idea Ownership, and Copyrights," International Special Events Society San Diego Chapter meeting, San Diego, California, November 20, 2008