Fabian M. Koenigbauer

Counsel

Washington, D.C.
T +1.202.861.1741
F +1.202.861.1783

Overview

As a patent attorney, Fabian Koenigbauer has helped clients secure, expand and enforce patent rights in both the U.S. and globally for more than 15 years. He specializes in building patent portfolios for small and large molecules (biologics), analyzing freedom-to-operate issues, maximizing patent term and developing patent protection for products subject to Hatch-Waxman or biologics litigations. He also advises his clients on adverse patent matters, including litigation, oppositions and AIA trials, and participates in AIA trials on the sides of both patent challengers and patent owners.

He has prepared and prosecuted patent applications for biologics in clinical trials on behalf of one the world largest pharmaceutical companies. He has assisted clients with various Hatch-Waxman-related strategies, including obtaining patent protection for drugs subject to 505(b)(2) applications, preparing the underlying assertions for a paragraph IV certification for an ANaDA, opinions of counsel directed to patents involved in ANDA litigations and assessing the scope of innovator patents.

In addition, he practices aspects of domestic and international patent law, with a specific focus on the life sciences industry. His educational background in biochemistry and biotechnology, as well as his professional experience working with clients at all stages of product development, including products in pre-clinical trials and clinical trials, enables him to help clients develop their patent portfolios, assert their patent rights and defend against infringement allegations.

Fabian also routinely provides strategic counsel to clients on the processes of intellectual property transactions, including due diligences, portfolio development, licensing and litigation, with particular experience in developing and managing global patent portfolios in the life sciences industry. He has also represented clients in post-grant proceedings in the USPTO, including post-grant reviews. In addition, Fabian has asserted and defended patents through pre-litigation investigations, discovery, trials and appeals in the Federal Circuit. He has advised clients ranging from small companies and start-ups to Fortune 100 companies.

Select Experience

Strategic portfolio management

  • Manages patent portfolios for Fortune 50 pharmaceutical company regarding cancer treatment, stem cell and related technologies, working on behalf of client through domestic and foreign patent prosecution at various stages of the technologies’ clinical development.

Adversarial Patent Matters

  • Assisted with strategies relating to discovery for foreign adverse proceedings under 28 U.S.C. § 1782.

Deals and product developments

  • Assists a consumer health care subunit of a major pharmaceutical company with potential legal issues surrounding product developments, including freedom to operate and patent landscaping.
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Experience

Strategic portfolio management

  • Manages patent portfolios for Fortune 50 pharmaceutical company regarding cancer treatment, stem cell and related technologies, working on behalf of client through domestic and foreign patent prosecution at various stages of the technologies’ clinical development.
  • Manages patent portfolios relating to various over-the-counter drugs for a consumer health care subunit of a major pharmaceutical company.
  • Assist start-up companies in strategic development of patent portfolios.
  • Devise strategies for patent life cycle managements, including patent term extension and patent term adjustment.
  • Successfully challenged USPTO’s patent term adjustment determinations, including increases in patent term by more than a thousand days.
  • Advise clients on handling third party submissions and European oral proceedings.

Adversarial Patent Matters

  • Assisted with strategies relating to discovery for foreign adverse proceedings under 28 U.S.C. § 1782.
  • Part of a team successfully challenging multiple patents in post-grant reviews in the chemical space (agrochemical).*
  • Advises clients on European Opposition proceedings.
  • Participates in strategic portfolio development for patents designed to be enforced globally.
  • Represented water treatment device manufacturer in multiple domestic and foreign patent enforcement proceedings, including summary judgment briefing and appeal to Federal Circuit.
  • Defended leader in organ and tissue transplantation in patent infringement suit involving bone graft cleaning and bone demineralizing technologies, resulting in a multimillion-dollar jury verdict in client’s favor.*
  • Represented polishing slurry manufacturer in declaratory judgment action against industry leader, including summary judgment briefing.

Deals and product developments

  • Assists a consumer health care subunit of a major pharmaceutical company with potential legal issues surrounding product developments, including freedom to operate and patent landscaping.
  • Conducted due diligence and blinded technology reviews for potential acquisitions, including clearance, freedom-to-operate and patentability issues, for Fortune 50 company.
  • Assess scope of patent licenses.
  • Performs intellectual property due diligence for mergers and acquisitions, and blinded technology reviews.

* Does not guarantee similar results in comparable matters.

Recognitions and Memberships

Recognitions

  • D.C. Super Lawyers "Rising Star" (2017)

Memberships

  • District of Columbia Bar Association
  • Intellectual Property Owners Association

Blog Posts

Prior Positions

  • Massachusetts Institute of Technology, Office of Sponsored Programs: Law Clerk

Admissions

  • U.S. Patent and Trademark Office, Registration No. 66,959
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, District of Columbia Circuit
  • District of Columbia
  • New York

Education

  • J.D., Franklin Pierce Law Center (now the University of New Hampshire School of Law), 2003
  • LL.M., Intellectual Property, Franklin Pierce Law Center (now the University of New Hampshire School of Law), 2003
  • M.S., Biotechnology, Johns Hopkins University, 2005
  • B.S., Biochemistry, University of Victoria, 2000

Languages

  • German

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
A Brief Overview of the USPTO's Interim Procedures Implementing Arthrex
By Fabian M. Koenigbauer
June 29, 2021
On June 21, 2021, the Supreme Court issued its long-awaited decision in United States v. Arthrex, 19-1434, 19-1452, 19-1458. The issue in Arthrex was “whether the authority of Administrative Patent Judges (APJs) to issue decisions on...
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IP Intelligence: Insight on Intellectual Property
The USPTO Harmonizes the Indefiniteness Standard Used for AIA Trials Making it More Difficult to Find a Claim Indefinite
By Fabian M. Koenigbauer
January 14, 2021
Recently, the United States Patent and Trademark Office (USPTO) issued a memorandum to the Patent Trial and Appeal Board (PTAB) requiring the PTAB to change the standard used to assess the definiteness requirement under 35 U.S.C. § 112 for...
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IP Intelligence: Insight on Intellectual Property
Moderna Opens Its IP Vault During the Pandemic to Allow Others to Rely on Its Patented Technologies to Find a Treatment For COVID-19
By Fabian M. Koenigbauer
October 12, 2020
On Oct. 8, Moderna, Inc., issued a statement on intellectual property matters during the COVID-19 pandemic. In the statement, Moderna acknowledged the importance of the role of intellectual property “in encouraging investment in research.”...
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IP Intelligence: Insight on Intellectual Property
Strategic Considerations for Participation in the USPTO's COVID-19 Deferred-Fee Provisional Application Pilot
By Fabian M. Koenigbauer
September 21, 2020
On Sept. 17, the United Patent and Trademark Office (USPTO) issued a notice implementing a deferred-fee provisional application pilot program for COVID-19-related technologies. The pilot is designed “[t]o disseminate information designed...
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IP Intelligence: Insight on Intellectual Property
Landmark UK Supreme Court Decision Grants UK Courts Power to Set the Global Royalty Rate for Standard Essential Patents
By Fabian M. Koenigbauer
August 31, 2020
On Aug. 26, 2020, the United Kingdom Supreme Court issued a decision in Unwired Planet International Ltd & Anor v Huawei Technologies (UK) Co Ltd & Anor [2020] UKSC 37 that changes the landscape for patentees seeking to enforce standard...
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