• Global IP strategy.
  • Building strong patent portfolios. 
  • Due diligence and freedom-to-operate.  
  • Complex issues: use of oppositions, protests, inter partes reviews, post-grant reviews and litigation. 
  • Interface with regulatory exclusivity and FDA regulations. Orange Book patent listings. Patent term extension applications. 
  • IP aspects of licenses and collaborations from term sheets to agreements, sponsored research, technology and material transfer agreements.  

Representative Technology

  • Antibodies 
  • Antisense, RNAi, miRNA, ncRNA 
  • Recombinant biologics 
  • Peptides and chemically modified derivatives 
  • Vaccines and immune therapies 
  • Chemical pharmaceutical products 
  • Pharmaceutical formulations 
  • Therapeutic methods using traditional pharmaceuticals or biologics 
  • Recombinant manufacturing processes and vectors 
  • Diagnostic methods 
  • GMO plants

Example Client Experiences

Acquisition of Public Company

  • Led team that built an extensive patent portfolio for InterMune, Inc. relating to ESBRIET, a drug that treats idiopathic pulmonary fibrosis (IPF). 
  • Accelerated examination to obtain patent grants in time for the drug’s approval.  
  • Handled the IP due diligence relating to InterMune’s acquisition by a global pharma company for US$8.3 billion. 

Acquisition of Startup

  • Built patent portfolio for Marcadia Biotech, Inc., a startup based on university technology. 
  • Handled IP aspects of collaborations with two of the ten largest pharmaceutical companies in the world.
  • Helped negotiate licenses and other agreements. 
  • Handled the IP due diligence surrounding their acquisition in 2010 by a global biopharma company for up to $537 million.​  

Startup to IPO

  • Advised CRISPR Therapeutics on its intellectual property strategy since its formation.
  • CRISPR Therapeutics is a biopharmaceutical company focused on the breakthrough gene-editing technology CRISPR-Cas9. 

Patenting Systems of the Future

  • Co-represented a university and its licensee Electrochaea in obtaining patents that cover their innovative microorganism-based technology that converts electricity to methane gas. Electrochaea launched the first commercial scale power-to-gas project.