Fabian M. Koenigbauer

Counsel

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

Overview

Fabian Koenigbauer's practice focuses on all aspects of domestic and international patent law, particularly in regards to 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. He has particular expertise in developing and managing global patent portfolios in the life sciences industry. 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

  • Managed 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.
  • Devise strategies for patent life cycle managements, including patent term extension and patent term adjustment.
  • Conducted due diligence and blinded technology reviews for potential acquisitions, including clearance, freedom-to-operate and patentability issues, for Fortune 50 company.
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Experience

  • Managed 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.
  • Devise strategies for patent life cycle managements, including patent term extension and patent term adjustment.
  • Conducted due diligence and blinded technology reviews for potential acquisitions, including clearance, freedom-to-operate and patentability issues, for Fortune 50 company.
  • 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.

* 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
  • American Intellectual Property Law Association
  • Intellectual Property Owners Association

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
Industry Initiatives to Ensure Access to Intellectual Property Rights Associated With COVID-19 Treatment
By Fabian M. Koenigbauer
May 15, 2020
In response to the COVID-19 outbreak, all sectors of industry have taken almost unprecedented steps to ensure access to intellectual property, mainly patent rights, associated with COVID-19 treatments. Through these initiatives, it is...
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IP Intelligence: Insight on Intellectual Property
Key UPSTO Initiatives to Ease Burden On Patent Owners and Patent Applicants During the COVID-19 Outbreak
By Fabian M. Koenigbauer
May 13, 2020
Since the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) has tried to ease the burden on patent owners and applicants. The key USPTO initiatives are summarized below. I. Waiver of paper filing requirements for...
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IP Intelligence: Insight on Intellectual Property
A Brief Summary of the Key USPTO Initiatives to Speed Up Development of Treatment for COVID-19
By Fabian M. Koenigbauer
May 12, 2020
Since the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) has implemented initiatives designed to expedite the grant of patents directed to COVID-19 treatment or to expedite the licensing/commercializing of...
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IP Intelligence: Insight on Intellectual Property
US Patent and Trademark Office Issues FAQ on Temporary Extension of Due Date in Patent and Trademark Matters Authorized by CARES Act
By Fabian M. Koenigbauer
April 10, 2020
As previously noted, on March 31, the US Patent and Trademark Office (USPTO) used its authority granted under the Coronavirus Aid, Relief, and Economic Security (CARES) Act to extend by 30 days due dates for certain patent and trademark...
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IP Intelligence: Insight on Intellectual Property
US Patent and Trademark Office Uses Authority Granted Under CARES Act to Temporarily Extend Due Date for Certain Patent and Trademark Matters
By Fabian M. Koenigbauer
April 1, 2020
The Coronavirus Aid, Relief, and Economic Security (CARES) Act gives the director of the U.S. Patent and Trademark Office (USPTO) the ability to manage due dates in patent and trademark matters if certain criteria are met. On March 31, the...
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