G R O U P   S T A T S

  • 23 members
  • 18 members have doctorate or medical degrees
  • Academic backgrounds include: organic chemistry, medicinal chemistry, process chemistry, formulation chemistry, chemical biology, chemical engineering, molecular biology, biochemistry, medical biophysics, immunology, molecular genetics, toxicology, and epidemiology
  • Services include: IP strategic planning; patent and trademark acquisition and enforcement; studies on patentability, infringement, and validity; IP audits and due diligence; licensing and technology transfer; post grant proceedings; and competitor analysis

From first-hand experience, members of our Pharmaceutical Group understand the importance of patents, trademarks, and trade secrets to pharmaceutical companies. Group members have conducted research at and represented pharmaceutical giants and start-ups alike. This means we understand the interaction of patents with a range of FDA issues such as patent term extensions, non-patent exclusivities, Orange Book listing requirements, Hatch-Waxman issues, and ANDA (Abbreviated New Drug Application) litigation. 

Client testimonial:
"In addition to the hands-on prosecution and portfolio, they also provide more strategic advice regarding positioning portfolios, dealing with partners and helping us get to a dominant position in our field so that we would be a beneficial partner to another entity."

Our attorneys also are experienced in handling a wide variety of licensing issues and work with our clients to license in as well as license out technology.

Client testimonial:
"They want to get to the bottom of an issue and help a client get the maximum value out of the science."

Clients include global and emerging pharmaceutical companies, such as Shire and Progenics Pharmaceuticals as well as prestigious academic and research institutions such as Harvard Medical School, Dana Farber Cancer Institute, and Sloan-Kettering. They appreciate our depth of experience as well as our attention to client service.

Client testimonial:
"On a service level, they are at the top of the list. They are timely, clear communicators and the eye for detail is very, very good."
  • A new client thought it had a dominant IP position based on patents filed years earlier. We were asked to do diligence and a freedom-to-operate opinion respecting a lead product. We uncovered a series of prior art documents that would have undermined the client’s position in the eyes of an investor. The client bought the competitor’s IP, took a new position in-line with the discovered prior art, yielding a strong valuation and investment.
  • We conducted multiple patent due diligence projects for a clinical-stage, biopharmaceutical company related to both small-molecule and antibody therapeutics, including analyzing strengths of granted and pending patent claims and possible hurdles to overcome, focusing on large business markets such as the U.S. and Europe.  
  • A large hedge fund client sought our advice to help it decide whether to invest in a small pharmaceutical company whose patent portfolio might prevent a large pharmaceutical company from making and selling a blockbuster drug. We performed due diligence to determine the strengths of the patent portfolios of the pharmaceutical companies, the likelihood of success of the small pharmaceutical company in a potential interference proceeding against the large pharmaceutical company in the U.S., and the likelihood of success of the pharmaceutical companies in various opposition proceedings in Europe. Based on our due diligence report, our client invested heavily in the small pharmaceutical company.
  • For a small bio-medical device company with foundational IP encompassing non-invasive methods of treating various ophthalmologic conditions, we battled for two years with the USPTO over the scope of claims, finally succeeding in submitting key data and arguments which garnered allowance without jeopardizing claim scope. The issuance of two additional U.S. patents covering related methods quickly followed, and our world-wide strategy produced similar results.
  • A global biotechnology company asked us to conduct IP due diligence on a technology it wanted to acquire. In less than two weeks, we evaluated over 200 U.S. patents and pending U.S. and international applications, mapped out a timeline of the IP landscape in relevant antisense technology over the past 25 years, and provided our opinion regarding freedom to operate with the technology to be acquired.
  • A major research university asked us to evaluate one of its U.S. patents in preparation for litigation to enforce patent rights. The claims of the patent were being allegedly infringed by the sale of a recently approved drug with over $2 billion in annual sales. We reviewed each claim, term by term, to provide systematic support for claim construction and provided our client with an opinion on enforceability against the infringing product.
  • We developed an Orange Book listing strategy successfully used to block generic competition via ANDA litigation.

Representative clients:

Recent Articles:

April 8, 2015
"Diagnostic patenting since Myriad: an update" by Patrick R. H. Waller and Daniel W. Young
Stakeholders shouldn’t conclude that nothing is patent eligible in the diagnostic space. Read more

March 2014
"
CRISPR/Cas-9: An Exciting Addition to Genomic Editing"
by Patricia Granahan and Chelsea A. Loughran
This article provides an in-depth review of (1) the science behind this new technology, (2) several of the research groups responsible for the promising applications for this technology, and (3) the related and evolving intellectual property (IP) landscape. Read more

February 2014
"
The New World of Diagnostic Testing Post-Myriad"
by Patrick R. H. Waller and Daniel W. Young
Claims to isolated DNA segments that exist in nature are not patent eligible, but claims to certain synthetic molecules relevant to genetic testing—as well as certain method-of-use patents—likely remain patent eligible. Read more

To view older publications, go to Publications


G R O U P   S T A T S

  • 23 members
  • 18 members have doctorate or medical degrees
  • Academic backgrounds include: organic chemistry, medicinal chemistry, process chemistry, formulation chemistry, chemical biology, chemical engineering, molecular biology, biochemistry, medical biophysics, immunology, molecular genetics, toxicology, and epidemiology
  • Services include: IP strategic planning; patent and trademark acquisition and enforcement; studies on patentability, infringement, and validity; IP audits and due diligence; licensing and technology transfer; post grant proceedings; and competitor analysis

From first-hand experience, members of our Pharmaceutical Group understand the importance of patents, trademarks, and trade secrets to pharmaceutical companies. Group members have conducted research at and represented pharmaceutical giants and start-ups alike. This means we understand the interaction of patents with a range of FDA issues such as patent term extensions, non-patent exclusivities, Orange Book listing requirements, Hatch-Waxman issues, and ANDA (Abbreviated New Drug Application) litigation. 

Client testimonial:
"In addition to the hands-on prosecution and portfolio, they also provide more strategic advice regarding positioning portfolios, dealing with partners and helping us get to a dominant position in our field so that we would be a beneficial partner to another entity."

Our attorneys also are experienced in handling a wide variety of licensing issues and work with our clients to license in as well as license out technology.

Client testimonial:
"They want to get to the bottom of an issue and help a client get the maximum value out of the science."

Clients include global and emerging pharmaceutical companies, such as Shire and Progenics Pharmaceuticals as well as prestigious academic and research institutions such as Harvard Medical School, Dana Farber Cancer Institute, and Sloan-Kettering. They appreciate our depth of experience as well as our attention to client service.

Client testimonial:
"On a service level, they are at the top of the list. They are timely, clear communicators and the eye for detail is very, very good."
  • A new client thought it had a dominant IP position based on patents filed years earlier. We were asked to do diligence and a freedom-to-operate opinion respecting a lead product. We uncovered a series of prior art documents that would have undermined the client’s position in the eyes of an investor. The client bought the competitor’s IP, took a new position in-line with the discovered prior art, yielding a strong valuation and investment.
  • We conducted multiple patent due diligence projects for a clinical-stage, biopharmaceutical company related to both small-molecule and antibody therapeutics, including analyzing strengths of granted and pending patent claims and possible hurdles to overcome, focusing on large business markets such as the U.S. and Europe.  
  • A large hedge fund client sought our advice to help it decide whether to invest in a small pharmaceutical company whose patent portfolio might prevent a large pharmaceutical company from making and selling a blockbuster drug. We performed due diligence to determine the strengths of the patent portfolios of the pharmaceutical companies, the likelihood of success of the small pharmaceutical company in a potential interference proceeding against the large pharmaceutical company in the U.S., and the likelihood of success of the pharmaceutical companies in various opposition proceedings in Europe. Based on our due diligence report, our client invested heavily in the small pharmaceutical company.
  • For a small bio-medical device company with foundational IP encompassing non-invasive methods of treating various ophthalmologic conditions, we battled for two years with the USPTO over the scope of claims, finally succeeding in submitting key data and arguments which garnered allowance without jeopardizing claim scope. The issuance of two additional U.S. patents covering related methods quickly followed, and our world-wide strategy produced similar results.
  • A global biotechnology company asked us to conduct IP due diligence on a technology it wanted to acquire. In less than two weeks, we evaluated over 200 U.S. patents and pending U.S. and international applications, mapped out a timeline of the IP landscape in relevant antisense technology over the past 25 years, and provided our opinion regarding freedom to operate with the technology to be acquired.
  • A major research university asked us to evaluate one of its U.S. patents in preparation for litigation to enforce patent rights. The claims of the patent were being allegedly infringed by the sale of a recently approved drug with over $2 billion in annual sales. We reviewed each claim, term by term, to provide systematic support for claim construction and provided our client with an opinion on enforceability against the infringing product.
  • We developed an Orange Book listing strategy successfully used to block generic competition via ANDA litigation.

Representative clients:

Recent Articles:

April 8, 2015
"Diagnostic patenting since Myriad: an update" by Patrick R. H. Waller and Daniel W. Young
Stakeholders shouldn’t conclude that nothing is patent eligible in the diagnostic space. Read more

March 2014
"
CRISPR/Cas-9: An Exciting Addition to Genomic Editing"
by Patricia Granahan and Chelsea A. Loughran
This article provides an in-depth review of (1) the science behind this new technology, (2) several of the research groups responsible for the promising applications for this technology, and (3) the related and evolving intellectual property (IP) landscape. Read more

February 2014
"
The New World of Diagnostic Testing Post-Myriad"
by Patrick R. H. Waller and Daniel W. Young
Claims to isolated DNA segments that exist in nature are not patent eligible, but claims to certain synthetic molecules relevant to genetic testing—as well as certain method-of-use patents—likely remain patent eligible. Read more

To view older publications, go to Publications