David B. Hoffman

Counsel

Philadelphia
T +1.215.564.8376
F +1.215.568.3439

Overview

David Hoffman focuses his practice on patent prosecution and counseling in all areas of chemistry and the life sciences. David has planned, drafted, and prosecuted patent applications for many diverse clients, working directly with large corporations, small companies, startup ventures and individual inventors. David was instrumental in obtaining key patent coverage on new technologies in the pharmaceutical, diagnostic and medical device fields that have since been commercialized or licensed. He also has extensive experience in due diligence, freedom-to-operate and patentability analyses, as well as in the planning and drafting of formal opinions regarding validity and infringement. David's practice encompasses all technology areas within life sciences and chemistry, including pharmaceuticals, medical devices and implants, dosage forms, diagnostic methods, industrial chemical compositions, biotechnology, and many other medical and chemical inventions.

Before attending law school, David spent several years in a university cell biology and biochemistry laboratory, where he was engaged in research concerning cytoskeletal and mitotic processes. David's work in the laboratory provided him with the experience to fully appreciate the important concepts behind many patent applications, and to arrive at creative solutions to intricate problems in patent drafting and prosecution. While he was there, he also co-authored several articles in scientific journals.

Select Experience

  • Manages patent application portfolios for a major corporation in small molecule, device and pharmaceutical dosage form technologies. Management includes understanding of foreign practice in order to maximize the scope of global protection and direction of foreign agents.
  • Responsible for a patent application portfolio concerning dosage forms for the treatment of a behavioral disorder, of which commercial sales exceeded $1 billion in both 2010 and 2011. Interfaces with the client's litigation counsel to coordinate patenting strategy.
More »

Experience

  • Manages patent application portfolios for a major corporation in small molecule, device and pharmaceutical dosage form technologies. Management includes understanding of foreign practice in order to maximize the scope of global protection and direction of foreign agents.
  • Responsible for a patent application portfolio concerning dosage forms for the treatment of a behavioral disorder, of which commercial sales exceeded $1 billion in both 2010 and 2011. Interfaces with the client's litigation counsel to coordinate patenting strategy.
  • Represents a major research university in patent procurement projects involving valve replacement technology, anti-influenza compounds, structural coloration agents and controlled drug release compositions. Was responsible for the completion of the procurement process that permitted licensing of patented subject matter, thereby generating revenue stream for the university.
  • Provides freedom-to-operate assessments concerning complex chemical synthesis methods, pharmaceutical compositions and medical devices to a global corporation. For example, conducted analysis and prepared formal assessments concerning production of opioid analgesics that solidified invalidity or noninfringement positions concerning more than 10 patents.

Recognitions and Memberships

Industries

Admissions

  • U.S. Court of Appeals, Federal Circuit
  • U.S. District Court, Eastern District of Pennsylvania
  • U.S. Patent and Trademark Office, Registration No. 62,835
  • Pennsylvania

Education

  • J.D., University of Pennsylvania Law School, 2004
  • B.S., Biology, University of North Carolina at Chapel Hill, 1998, highest honors, Phi Beta Kappa