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
Associate Atlanta
Associate Denver
Counsel Washington, D.C.
Partner Philadelphia
Associate Philadelphia
Counsel Atlanta
Partner Philadelphia
Associate Philadelphia
Partner Atlanta
Partner Philadelphia
Counsel Philadelphia
Partner Washington, D.C.
Counsel Philadelphia
Associate Philadelphia
Associate Philadelphia
Partner Cincinnati
Partner Seattle
Counsel Washington, D.C.
Partner Costa Mesa
Of Counsel Philadelphia
Partner Philadelphia
Partner Philadelphia
Counsel Philadelphia
Partner Philadelphia
Partner Washington, D.C.
Partner Philadelphia
Partner Philadelphia

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 2020 BTI Client Service 30 for the sixth consecutive year.

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
Can Booking.com Trademark Its Company Name? How Will the U.S. Supreme Court Resolve Whether a Generic Term Plus a Top-Level Domain Is Protectable?
By Jason S. Oliver
January 15, 2020
The legal battle between Booking.com BV and the U.S. Patent and Trademark Office (USPTO) began more than five years ago and concerns whether the online hotel booking company can secure a trademark registration for its name. After filing...
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IP Intelligence: Insight on Intellectual Property
Who Is Holding the Bag: How Will the Supreme Court Resolve the Circuit Split on Recovery of Profits in Trademark Cases?
By Jacqueline M. Lesser
December 31, 2019
Two weeks from now, on January 14, 2020, the Supreme Court will hear oral argument in Romag Fasteners, Inc. v. Fossil, Inc. on the long-standing circuit split over whether willful infringement is a necessary precondition for an award of...
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IP Intelligence: Insight on Intellectual Property
POP Addresses IPR Printed Publication Standard
By Timothy J. Doyle Ph.D.
December 26, 2019
The Precedential Opinion Panel (POP) of the Patent Trials and Appeals Board (PTAB) recently answered the question, “What is required for a petitioner to establish that an asserted reference qualifies as a ‘printed publication’ at the...
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IP Intelligence: Insight on Intellectual Property
Settlement Offers Can Be Used Against You (in a Patent Case)
By Jason F. Hoffman
December 23, 2019
Rule 408 of the Federal Rules of Evidence protects settlement communications. The language of the rule is clear. Such communications are “not admissible . . . to prove or disprove the validity . . . of a disputed claim.” However, there are...
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IP Intelligence: Insight on Intellectual Property
Hussein Akhavannik, Fabian Koenigbauer Article Examines Lessons to Learned from "Pharma Tech" Decision
By Hussein Akhavannik, Fabian M. Koenigbauer
December 20, 2019
Partner Hussein Akhavannik and Counsel Fabian Koenigbauer authored an article published Dec. 19, 2019, by IAM.com. The article, “Federal Circuit Ruling Marks Out Dangers of Doctrine of Equivalents Estoppel,” discusses how the Federal...
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