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, Ionis Pharmaceuticals, Celgene, Amgen, Morphotek (now a part of Eisai), the National Institutes of Health, 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).

More »
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).
More »

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

  • Daily Report Intellectual Property Litigation Department of the Year (2017)
  • BTI Client Service 30: BakerHostetler advanced 19 positions to #9 (2016)

Key Contacts

Blog

In The Blogs

Previous Next
IP Intelligence: Insight on Intellectual Property
Federal Circuit Splits on Approach to Analyzing Graham Factors
November 6, 2017
In Merck Sharp & Dohme Corp. v. Hospira, Inc.,[1] the Federal Circuit affirmed the lower court’s ruling that the asserted claims of Merck’s U.S. Patent No. 6,486,150 (the ’150 patent) were obvious despite evidence of commercial success and...
Read More ->
IP Intelligence: Insight on Intellectual Property
The Federal Circuit Provides a Tutorial on Patent Venue
By Allen M. Sokal
September 27, 2017
The Federal Circuit in In re Cray, Inc., Appeal No. 2017-129 (Fed. Cir. Sept. 21, 2017), has provided extensive guidance to district courts on the meaning of an alleged infringer’s “regular and established place of business” under the...
Read More ->
IP Intelligence: Insight on Intellectual Property
Intellectual Ventures v. Motorola: Use = Benefit for the Purposes of System Claims Infringement
September 21, 2017
On Sept. 13, 2017, the United States District Court for the Federal Circuit clarified the meaning of the term “use” as it applies to system claims in patent infringement actions. In doing so, the court held that an infringer must benefit...
Read More ->
IP Intelligence: Insight on Intellectual Property
A Cautionary Tale: IPR Petition Denied Based on Third-Party Submission
August 30, 2017
In Cultec, Inc. v. StormTech LLC, IPR2017-00777, Paper 7 (Aug. 22, 2017), the Patent Trial and Appeal Board (Board) denied an inter partes review because the same or substantially the same prior art or arguments were said to have been...
Read More ->
IP Intelligence: Insight on Intellectual Property
Federal Circuit’s Concern Regarding PTAB ‘Panel-Stacking’ – Back To The Future?
August 29, 2017
In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 2017 U.S. App. LEXIS 15923, Circuit Judge Dyk, in a concurring opinion joined by Circuit Judge Wallace, questioned “whether the practice of expanding panels where the PTO is...
Read More ->