Chemical / Biotech / Pharmaceutical

The professionals in the Chemical / Biotech / Pharmaceuticals Group have education, training, and experience in such diverse areas as chemistry (inorganic, organic, physical, biochemistry), biophysics, biotechnology, cell and molecular biology, agriculture, pharmacology and pharmaceutical science, chemical engineering, and materials science. Within the group there are four members with Ph.D. degrees, one with a Pharm.D. degree, and four with Master's degrees. Group members have university, government, and industry experience in research and development, business operations and legal departments. This considerable breadth of education and experience provides us with the acumen to understand and anticipate the needs of our clients.

We have extensive experience in all phases of domestic and foreign patent prosecution, including, for domestic applications, appeals to the U.S. Board of Patent Appeals and Interferences and the U.S. Court of Appeals for the Federal Circuit. The technical fields in which we have prosecuted patents include: chemistry, biotechnology, agriculture, food chemistry, pharmaceuticals and medicine. (Click here for a list of representative patents) Whether patents are being obtained for small, medium-sized, or large corporations, patent rights are integral to a business plan, for example, through licensing or enforcement. Thus, in addition to our technical and patent prosecution experience, we use our knowledge and experience in licensing and enforcement to maximize the value of the patents we obtain for our clients. Similarly, adding value to a client's business may entail an evaluation of whether another form of intellectual property (e.g., trade secret/know how, trademarks) would also be useful to meet a client's business goals. In this regard, we bring an interdisciplinary approach to each client to ensure that the intellectual property rights sought will provide that client with the greatest value.

Our Group also has many years of experience preparing clearance opinions and providing advice to help clients assess the inherent risks in developing and marketing new products, and avoiding liability or enhanced liability in patent infringement suits. In addition, we help clients expand and promote their businesses by performing landscape analyses on patents covering specific technologies. Clients find these instructive, and sometimes indispensable, in determining future product ideas and improvements. Here are just a few examples.

  • Provided comprehensive non-infringement opinion days before product launch to avert delay in launch date. That was about 4 years ago and the product is going strong.
  • Provided comprehensive non-infringement opinion after client's former counsel advised that new product would infringe a patent that surfaced at the last minute. Several months later in a meeting with this client, a member of the client's marketing department actually hugged the opinion's author. She said, "We have already sold over a million dollars! And if we had believed [former counsel] we would've killed the project." When a client hugs its patent counsel you know you have done something right.
  • Represented clients in acquisition against last minute assertions that would have devalued the intellectual property to be acquired. We were able to complete the acquisition for the originally agreed upon price.
  • A research institute contacted us to evaluate their research for possible patent protection. They were concerned about the potential for licensing or obtaining funding to develop their product. Attorney suggested filing a patent application as a basis for seeking funding through governmental sources and ultimately licensing the technology in the U. S. That strategy netted the client nine million dollars in new research grants. The technology was subsequently licensed for commercial implementation in the U. S.
  • Assisted in negotiation of a license for formulation technology for client who applied the technology to pharmaceutical product to improve bioavailability of low solubility compounds.

We have helped build or enhance the patent portfolios of a host of clients including universities, medical schools, pharmaceutical companies, all sizes of biotechnology companies, specialty and industrial chemical companies, and manufacturers of medical devices. This has often included the protection of commercial products and valuable processes. Our clients include a Fortune 500, multinational health care products corporation, a midsize generic pharmaceuticals corporation, a start-up biotechnology corporation specializing in drug delivery technology, a specialties chemical company, and a young corporation producing innovative foam products for construction, fire retardation, and other industrial applications. Thus, we have experience helping a variety of clients to profit from their intellectual property whether through licensing, technology transfer, enforcement, or portfolio management.

RatnerPrestia's Chemical / Biotech / Pharmaceuticals Group is co-chaired by Christopher Lewis and Jonathan Spadt.

 

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