Our attorneys and patent agents have extensive technical experience gained from years of service in both industry and academia as research scientists, post-doctoral fellows and university faculty. Additionally, our vast legal experience has been developed through our work as in-house counsel, within the Examining Corps of the U.S. Patent and Trademark Office and as adjunct law school faculty.
We service a range of both corporate and university clients in the areas of chemistry, biotechnology and pharmaceuticals and have particular expertise in areas that include genomics, agricultural biotechnology, proteomics, polymers, cell-based therapies, petrochemical and biochemical processing, molecular biology, virology, microbiology, pharmaceuticals, nanotechnology, vector technologies, industrial chemicals, food science, small molecules, vaccines, expanded cellular products, medical packaging, therapeutic proteins, immunology, drug formulations, physiology, drug delivery systems, gene arrays, diagnostic tests, industrial processes, medical treatments, medical devices and pharmaceutical business methods.
Our corporate clients include both large and mid-size pharmaceutical companies, leading biotechnology companies, medical device companies, building product and chemical companies, a major plant biotech company and various smaller companies that exist on the cutting edge of technology.
Biotechnology, Chemical & Pharmaceutical
- Development of intellectual property strategies for a large agricultural company, particularly in the areas of insect and disease resistance, novel plant genes and genetically modified agricultural products.
- Serving as patent counsel for a major medical/health care system for all intellectual property matters, including patent solicitation and licensing issues, in the areas of pharmaceuticals (e.g., new uses for known drugs, heart transplant solutions), medical devices (e.g., pelvic splints, laser inventions) and biotechnology-related inventions (e.g., tissue growth).
- Serving as patent counsel for a major pharmaceutical joint venture developing therapies for the treatment of Alzheimer’s disease.
- Preparing and securing patents for a major medical devices company in the areas of orthopedic medical devices, bone grafting materials, and anti-adhesives; and conducting non-infringement and validity investigations in these areas.
- Developed a licensing strategy and negotiated license agreements on behalf of a major agricultural client.
- Worked closely with the officers and investors of a small biotechnology company in assessing their entire patent estate and strategically consolidating the portfolio to decrease prosecution costs and refocus the portfolio in view of the company’s evolving business model.
Counseling and Strategic Issues
- Developed patent portfolios and strategies in a wide range of technical areas, including gene delivery, molecular target identification, therapeutic proteins, targeting molecules, vaccines, small molecule drugs, therapeutic methods, genetic and molecular diagnostic tests, and manipulation of gene expression through RNAi technology
- Work closely with in-house counsel to develop patent portfolios to protect products and to monitor competitor patents for potential freedom-to-operate issues
- Developed a licensing strategy and negotiated license agreements for a major agricultural client
- Developed intellectual property strategies for a large agricultural company, particularly in the areas of insect and disease resistance, novel plant genes and genetically modified agricultural products
- Worked closely with the officers and investors of a small biotechnology company to assess its entire patent estate, strategically consolidate their portfolio to decrease prosecution costs, and refocus the portfolio in view of the company’s evolving business model
Patent Application Drafting and Prosecution
- Filed and successfully prosecuted numerous patents in a broad range of molecular biology/biotechnology areas for a number of clients
- Drafted and prosecuted over 200 applications for thousands of novel gene sequences
- Drafted and prosecuted patents in the small molecule, pharmaceutical formulation and medical treatment areas
- Drafted and successfully prosecuted patents directed to recombinant protein production
- Drafted and prosecuted patent applications for novel indications for known compounds
- Secured patents on platform technologies related to viral vectors that helped a small biotechnology company secure venture capital financing
Patentability and Freedom-to-Operate Investigations and Opinions
- Provide freedom-to-operate, validity, and non-infringement opinions for a number of our clients in areas of biotechnology, pharmaceuticals, immunology, and medical diagnostics
- Provided freedom-to-operate opinion work for a major medical diagnostic company
Intellectual Property Due Diligence
- Aided a biotech client in securing over $20 million in financing by addressing freedom-to-operate issues with investors
- Aided a pharmaceutical client in securing over $50 million in financing by developing its patent portfolio and strategies, as well as addressing freedom-to-operate and patentability issues with investors
- Performed a due diligence analysis for a major pharmaceutical company for a potential product in phase III development
- Performed numerous due diligence analyses for a major biotech company on potential licensing partners in the pharmaceutical area
- Provided the due diligence and patent strategy for the first transgenic maize seed to be commercialized
Interferences and Litigation
- Represented clients in interference proceedings
- Defended companies against claims of patent infringement
- Drafted and filed an amicus brief on behalf of the Biotechnology Industry Organization in a patent case before the Federal Circuit Court of Appeals
Foreign Patent Prosecution and Oppositions
- Drected foreign prosecution and been involved in oppositions, including defending and opposing issued foreign patents