Life Sciences – Intellectual Property

We understand that life sciences companies need intellectual property counsel who speak the same language and have the technical experience and background to deliver effective support in patent preparation and prosecution, litigation and licensing. Our proven ability to devise unique strategies in the design and leverage of patent portfolios through prosecution, life cycle management, litigation, and regulatory exclusivity provides real value to clients in this competitive environment.

Patent Prosecution, Opinions and Counseling

Protecting intellectual property and technology assets in the constantly evolving life sciences sector is an ongoing process. Our attorneys do more than just draft patent applications. We provide a complete range of patent legal assistance in connection with the acquisition, maintenance, and enforcement of patent rights. We teach our clients’ inventors about patent submission and the preservation of research and development documentation, and we work with our clients to prioritize research targets to identify areas for intellectual property portfolio expansion. Our attorneys help our clients monitor competitive patent activities, analyze the strengths and weaknesses of their own and of competitors’ intellectual property portfolios, manage product life cycles (including in the context of Hatch-Waxman), and design or re-design products to avoid third-party intellectual property. We also provide clients with formal and informal patentability, validity, infringement and freedom-to-operate evaluations and opinions.

Patent Litigation

Our patent litigation team was ranked #2 nationally in the 2016 Patent Litigation Survey conducted by Corporate Counsel magazine for the number of patent cases handled. We have extensive experience in life sciences patent litigation, which gives our team the flexibility to handle even the most complicated bet-the-company litigation efficiently and successfully. We manage pharmaceutical and biotechnology patent and trade secret infringement litigation, including Hatch-Waxman litigation, disputes relating to development or licensing agreements, and inventorship disputes, as well as related adversary proceedings at the PTO. This includes challenges to validity in inter partes review proceedings under the America Invents Act.

Overall, our experienced first-chair litigators have an outstanding win rate. We leverage our attorneys’ broad patent litigation experience and deep scientific knowledge across a wide spectrum of technologies. We understand how underlying regulatory frameworks impact litigation strategy and have experience in litigating and managing related proceedings in other forums, such as in companion PTO proceedings. As a result, we are able to identify and understand the legal and scientific nuances that can make or break a case. At the same time, our experience and broad-based capabilities enable us to assess realistically the chances of success in litigation so that we can properly weigh settlement opportunities and counsel our clients on strategic options.

Licensing Agreements and Transactions

We have broad experience advising clients on transaction-related issues, negotiating solid deal terms, and achieving their strategic business objectives. Within the last several years alone we have represented clients involved in deals (acquiring and selling) totaling over $100 billion dollars, which involved evaluating intellectual property assets, conducting due diligence and audits, and negotiating agreements, including for mergers, acquisitions and initial public offerings (IPOs). Our attorneys also have experience in negotiating agreements commonly used to facilitate research at higher education institutions, such as sponsored research agreements, licensing agreements, material transfer agreements, confidentiality and nondisclosure agreements, memoranda of understanding, joint development agreements, and inter-institutional agreements.

Trademarks

Our intellectual property attorneys have a proven track record of helping clients protect and strengthen their brands. We help clients distinguish their businesses in a highly competitive life sciences marketplace, while often navigating a host of consumer protection regulations. We also represent companies in unfair competition matters, helping them resolve disputes with competitors and regulators across the Unites States and internationally.

Trade Secrets

We understand how vital competitive intelligence and other confidential information are to our clients. This is especially true for companies in the life sciences industry where joint ventures, collaborative partnerships and increased employee mobility are higher than average. Not only do we help our clients protect their trade secrets, we also help defend them against claims of trade secret theft. Our attorneys have the technological knowledge and legal experience to successfully represent clients in actions and negotiations related to trade secrets.

  • Served as lead intellectual property counsel for a major pharmaceutical company in its $32 billion takeover bid of another pharmaceutical company. Work included review of more than 20 commercial and pipeline products that focus on rare disease treatments.
  • Successfully represented Indivior in ANDA litigation against Actavis and Par relating to Indivior’s blockbuster opioid dependence treatment product, Suboxone® Film. Secured a favorable trial decision from the Federal District Court in Delaware that the defendants’ respective proposed generic products would infringe one of Indivior’s Orange Book-listed patents, that the asserted claims of that patent are valid, and enjoining defendants from launching their generic products until expiry of the patent.
  • Serve as lead intellectual property counsel in the U.S., and in many instances worldwide, relating to Reckitt Benckiser’s consumer goods business in the areas of cross-border patent prosecution, product clearance and intellectual property freedom-to-operate, acquisition and spin-off due diligence, as well as preparation for potential adversary proceedings on patent issues.
  • Handled due diligence and transaction drafting for a major pharmaceutical company in its $6.5 billion acquisition of a biotechnology company focused on the treatment of hereditary angioedema, or HAE. Also counseled on royalty provisions, trademark coverage, ownership issues and patent exclusivity.
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