Retired Partner
Joe helped clients resolve a range of intellectual property challenges with his deep legal experience and business acumen. He advised both at a strategic level and on day-to-day issues to ensure clients derived maximum value from their IP assets.
With more than 30 years of experience in all aspects of intellectual property law, Joe focused his practice in the pharmaceutical, life sciences, biotechnology and medical device fields. His practice encompassed litigation, including Hatch-Waxman and biosimilar litigation; inter partes proceedings; licensing; counseling; due diligence; patent and trademark prosecution and strategy; and mergers and acquisitions.
Joe represented clients in a variety of patent and trademark disputes in jurisdictions throughout the U.S., and as appellate counsel before the Court of Appeals for the Federal Circuit. He was particularly known for his experience handling complex Hatch-Waxman litigation, biosimilar matters and Bayh–Dole Act issues.
Joe's litigation experience also included pharmaceutical, biologics, industrial enzymes, biofuel production, molecular biology, recombinant technology, protein expression, immunology, drug formulation, drug delivery systems, microelectrodes, medical devices, charitable organization trademark and unfair competition, trade dress, and cases involving diversion of goods. Further, he advised on issues related to chemical, mechanical and biological purifications, as well as to cloning, transgenic animals, artificial organs, RNAi, stem cells, agricultural biology, screening technologies, industrial chemistry, organic chemistry, inorganic chemistry, synthetic chemistry, biochemistry, enzymatic and mechanical fabric treatments, cellphones, LEDs, materials, software, and business method technologies.
Joe was intellectual property counsel on more than $110 billion in mergers, acquisitions and licenses for big pharma, midsize pharma, small pharma and startups. His services included strategic issues, valuation, structuring, negotiations, and drafting.
Joe handled complex inter partes matters before the U.S. Patent and Trademark Office, inventorship disputes, and reissues. He counseled on patent-related FDA issues, including citizen petitions, Orange Book listings and trademark issues, particularly with respect to pharmaceutical and biologic trademarks. His patent prosecution practice included strategic patent portfolio development, particularly for Orange Book-listed pharmaceuticals and companies.
Joe represented clients from countries including the U.S., Brazil, Denmark, Germany, Japan, South Korea, Switzerland, and the U.K. He lectured internationally on issues concerning U.S. patent laws and trends.