Biotechnology, Chemical, and Pharmaceutical

Overview

Our Biotechnology, Chemical, and Pharmaceutical team helps clients leverage their intellectual property assets to create maximum revenue and growth, along with a distinct competitive edge. BakerHostetler's experience covers an extensive array of industries encompassed within the chemical arts field, including both life sciences and industrial chemical applications. Our attorneys develop a thorough understanding of a client's specific technologies and overall business strategy, and assist them in outlining and implementing a proprietary rights strategy with a global perspective. We work with our clients to maximize the value of portfolios proactively, handling everything from portfolio management, licensing, and planning to litigation avoidance, third-party diligence, and evaluation issues.

Pharmaceutical

We handle all types of pharmaceutical products whether the product is a small molecule, biological, or combination drug and device invention, including formulations, delivery systems, and isomerisms. Our attorneys also vigorously enforce and defend clients' patent and exclusivity rights, through litigation, arbitration, or mediation whenever necessary.

Our client list includes large corporations, emerging pharmaceutical companies, and nonprofit institutions. Among our clients are Johnson & Johnson, Celgene, Amgen, Morphotek (now a part of Eisai), Cephalon (now a part of Teva), and Bristol-Myers Squibb.

Most of our attorneys have advanced degrees and backgrounds in the life sciences, making us proficient in every area of pharmaceutical technology from molecular biology, nucleic acid therapeutics, and genetics to small molecule NDEs, delivery devices and systems, treatment regimes, and combination platforms. We are as comfortable dealing with diagnostic arrays, stem cell technologies, immunology, and drug delivery vehicles as we are with classical pharmaceutical formulations.

In addition, we have extensive experience in Abbreviated New Drug Applications (ANDA).

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Chemical

The chemical arts are inherent in a wide variety of industry sectors. BakerHostetler enhances the patent position of companies involved in making or selling industrial chemicals, ceramics, agricultural chemicals, drug delivery depots, small molecules, polymers, metal coatings, alloys, petrochemicals, personal care products, paints, medical implants, electronics, food products, and adhesives.

We counsel startups and smaller companies on ways to educate their scientists of patent law basics, developing patent and trademark portfolio strategies, surveying the competitive landscape, and staking out their territories. We also frequently assist in licensing the technology and, in some instances, navigating the federal regulatory pathways. Our attorneys advise large clients on how to handle the prosecution of specific cases or patent families that are particularly important or complex, or that require specific expertise.

Biotechnology

We have significant expertise and experience in the field of biotechnology and related biochemistry arts. Many of our firm's biotechnology lawyers hold advanced degrees in areas such as immunology, genetics, biochemistry, and molecular biology, as well as previously holding positions in the field as diverse as bench scientists, medical professionals, and corporate and university counsel. Their analyses and counseling are based upon substantial experience in biotechnology combined with a real understanding of business needs.

We represent a diverse group of clients, including many Fortune 500 pharmaceutical/biotech companies and universities in industries as diverse as biologic therapeutics, pharmaceuticals, plant and cell biology, food and agricultural sciences, and nanotechnology. We work with clients to develop a global patent strategy tailored to their unique needs that helps to ensure success in a competitive marketplace.

In addition to helping our clients obtain effective patent protection, we offer a full range of services encompassing patent enforcement and client counseling, including evaluation of patent validity, infringement, and freedom to operate. We assist clients in structuring agreements related to financing, licensing, and collaborative research, and also advise them on overcoming regulatory hurdles and protecting and exploiting patent rights.

We provide intellectual property strategy and planning services, opinions, clearance and right-to-use studies, U.S. and foreign patent preparation and prosecution, appeals, and, where appropriate, application guidance through reexamination or reissue and post-grant proceedings at the U.S. Patent and Trademark Office.

Select Experience

  • Represented the licenser of a breakthrough technology that provides rapid access to large numbers of genetically divergent organism lines, whereby several important technologies were retained by the owner and others were licensed to a major biotech enterprise, permitting much more effective exploitation of a proprietary portfolio.
  • Counseled numerous makers of pharmaceuticals and biologicals on patent issues attendant to FDA registration activities, assisting in navigating the difficult terrain surrounding Orange Book issues and ANDA challenges.
  • Evaluated, planned, and executed a landmark series of patent applications related to the distribution of teratogenically and otherwise dangerous pharmaceuticals that permit access to the pharmaceutical benefits while avoiding dangerous misdelivery of the drugs.
  • Successfully obtained dismissed of infringement claims based on administration of Hepatitis B vaccines in Classen Immunotherapies Inc. v. Biogen IDEC et al., CA WDQ 04-2607 (D. Md.).
  • Represented Phoenix Pharmacologics in litigation relating to the inventorship of PEGylated forms of arginine deiminase. Enzon Pharmaceuticals Inc. v. Phoenix Pharmacologics Inc., 04-1285 (D. Del).
  • Successfully represented Cephalon Inc. in interference proceeding before the U.S. Patent and Trademark Office concerning patents assigned to Genentech and Neuronz relating to the treatment of neural damage or disease using an insulin-like growth factor. Gluckman v. Lewis, Interference No. 104,553 (Bd. Patent App. and Interferences).
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Professionals

Name Title Office Email
Partner Washington, D.C.
Partner Philadelphia
Partner Washington, D.C.
Associate Atlanta
Of Counsel Washington, D.C.
Counsel Washington, D.C.
Partner Philadelphia
Associate Philadelphia
Counsel Atlanta
Patent Agent Philadelphia
Partner Philadelphia
Associate Philadelphia
Patent Agent Washington, D.C.
Associate Atlanta
Partner Philadelphia
Counsel Philadelphia
Partner Washington, D.C.
Counsel Philadelphia
Associate Philadelphia
Associate Philadelphia
Partner Cincinnati
Patent Agent Washington, D.C.
Partner Seattle
Counsel Washington, D.C.
Partner Costa Mesa
Of Counsel Philadelphia
Partner Philadelphia
Counsel New York
Partner Philadelphia
Counsel Philadelphia
Counsel Cincinnati
Partner Philadelphia
Partner New York
Patent Agent Philadelphia
Partner Washington, D.C.
Partner Atlanta
Partner Philadelphia
Partner Philadelphia
Partner New York
Partner Cleveland
Of Counsel Seattle
Counsel Washington, D.C.

Experience

  • Represented the licenser of a breakthrough technology that provides rapid access to large numbers of genetically divergent organism lines, whereby several important technologies were retained by the owner and others were licensed to a major biotech enterprise, permitting much more effective exploitation of a proprietary portfolio.
  • Counseled numerous makers of pharmaceuticals and biologicals on patent issues attendant to FDA registration activities, assisting in navigating the difficult terrain surrounding Orange Book issues and ANDA challenges.
  • Evaluated, planned, and executed a landmark series of patent applications related to the distribution of teratogenically and otherwise dangerous pharmaceuticals that permit access to the pharmaceutical benefits while avoiding dangerous misdelivery of the drugs.
  • Successfully obtained dismissed of infringement claims based on administration of Hepatitis B vaccines in Classen Immunotherapies Inc. v. Biogen IDEC et al., CA WDQ 04-2607 (D. Md.).
  • Represented Phoenix Pharmacologics in litigation relating to the inventorship of PEGylated forms of arginine deiminase. Enzon Pharmaceuticals Inc. v. Phoenix Pharmacologics Inc., 04-1285 (D. Del).
  • Successfully represented Cephalon Inc. in interference proceeding before the U.S. Patent and Trademark Office concerning patents assigned to Genentech and Neuronz relating to the treatment of neural damage or disease using an insulin-like growth factor. Gluckman v. Lewis, Interference No. 104,553 (Bd. Patent App. and Interferences).

Recognition

  • Chambers USA: Intellectual Property
    • Georgia (2018)
      • Band 4
    • Ohio (2018)
      • Band 2
    • Pennsylvania (2018)
      • Band 1
    • Recognized Practitioner: Intellectual Property Litigation in District of Columbia (2018).
    • Recognized Practitioner: Intellectual Property Patent Prosecution in District of Columbia (2018).
    • Recognized Practitioner: Intellectual Property Trademark, Copyright & Trade Secrets in New York (2018). 
  • Daily Report Intellectual Property Litigation Department of the Year (2017)
  • Recognized as one of the top law firms for client service, BakerHostetler was named to the 2019 BTI Client Service 30 for the fifth consecutive year.

Key Contacts

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
Mission Products v. Tempnology: The Supreme Court Speaks
May 24, 2019
In February, following oral argument before the U.S. Supreme Court in Mission Product Holdings, Inc. v. Tempnology, LLC,[1] we wrote about the hugely important trademark law issue presented by this case, namely: If a bankrupt trademark...
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IP Intelligence: Insight on Intellectual Property
Scout Me Out? Girl Scouts Challenge Boy Scouts' SCOUTS Trademark
By Lisa Bollinger Gehman
May 16, 2019
A trademark case to keep an eye on this year is Girl Scouts of the USA v. Boy Scouts of America, case no. 1:18-cv-10287, which was filed last November in the United States District Court for the Southern District of New York and is...
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IP Intelligence: Insight on Intellectual Property
Fifth Circuit Decision Highlights Trademark Protection for Fictional Elements
April 24, 2019
As previously reported on this blog, the Southern District of Texas ruled in Viacom International Inc. v. IJR Capital Investments LLC that Viacom could assert common-law rights in the trademark THE KRUSTY KRAB for a fictional restaurant on...
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IP Intelligence: Insight on Intellectual Property
The Federal Circuit Deals Another Blow to Diagnostic Method Patents
April 11, 2019
In another setback for diagnostic method patents, the Federal Circuit rejected efforts by patent owner/appellant Cleveland Clinic[1] to avoid 35 U.S.C. § 101 by restyling diagnostic method claims as “techniques” for detecting a correlation...
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IP Intelligence: Insight on Intellectual Property
Is it ‘anything goes?’ – The US expansive view of trademarks supports a wide variety of ‘nontraditional trademarks.’
April 4, 2019
“Trademark” is broadly defined in Section 45 of the Lanham Act, 15 U.S.C. §1127, as “any word, name, symbol, or device, or any combination thereof” that identifies and distinguishes goods and indicates source. The same definitional breadth...
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