Joseph Lucci

He | Him | His

Partner

Philadelphia
T +1.215.564.8370
F +1.215.568.3439

“Sources are quick to recommend him for his 'thoughtful and strategic approach' and 'excellent scientific, legal and business sense.'”

— IAM Patent 1000

Overview

Joe Lucci focuses his practice on patent strategy in the life sciences and pharmaceutical industries. Joe's practice encompasses patent litigation and prosecution, due diligence investigations and patent portfolio management. Joe enjoys working where law and business intersect – working closely with the in-house counsel of major pharmaceutical companies and medical device companies to develop and execute strategies to obtain, protect and enforce their intellectual property.

In addition to achieving litigation victories at the district court and appellate levels, Joe has also been lead counsel in numerous inter partes reviews, patent interferences, ex parte reexaminations and patent reissue proceedings.

Joe has been ranked since 2007 in Chambers USA: America’s Leading Lawyers for Business and is listed in The Best Lawyers in America®. His knowledge of complex subject matters and the ease with which he translates them for clients prompted the comment that Joe "is an extremely strong lawyer who can convey tough issues in an easily understandable way," in Chambers USA in 2020. Joe also is the managing partner of BakerHostetler's Philadelphia office.

Select Experience

  • Led a challenge of the Patent Office's position regarding the availability of subpoenas in inter partes reexamination proceedings, including district court proceedings and an appeal to the Federal Circuit.
  • Secured a jury verdict for the University of Pennsylvania in a patent infringement suit involving nucleic acids that code for amyloid precursor protein with the Swedish mutation.
  • Defended a pharmaceutical client's patent rights against allegations of misappropriation and improper inventorship relating to novel forms of the enzyme arginine deiminase.
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Experience

  • Led a challenge of the Patent Office's position regarding the availability of subpoenas in inter partes reexamination proceedings, including district court proceedings and an appeal to the Federal Circuit.
  • Secured a jury verdict for the University of Pennsylvania in a patent infringement suit involving nucleic acids that code for amyloid precursor protein with the Swedish mutation.
  • Defended a pharmaceutical client's patent rights against allegations of misappropriation and improper inventorship relating to novel forms of the enzyme arginine deiminase.
  • Obtained a finding of non-infringement for the client in a multiple-defendant litigation involving an assertion of four patents relating to the administration of hepatitis B vaccines.

Recognitions and Memberships

Recognitions

  • Chambers USA: Intellectual Property in Pennsylvania (2007 to 2022)
    • Band 3 (2014 to 2022), Band 4 (2013)
  • The Legal 500 United States (2016)
    • Recommended in Intellectual Property: Patents – Prosecution (including re-examination and post-grant proceedings)
  • Who's Who Legal: Patents (2016, 2017)
  • LMG Life Sciences Star in Intellectual Property (2016, 2017)
  • The Best Lawyers in America® (2010 to present)
    • Pennsylvania: Litigation – Patent
      • Best Lawyers® "Lawyer of the Year" (2019)
    • Pennsylvania: Patent Law
  • Martindale-Hubbell: AV Preeminent
  • Pennsylvania "Super Lawyer" (2010, 2013 to 2014, 2016 to 2021)
  • IAM Patent 1000: The World's Leading Patent Practitioners
    • Pennsylvania: Recommended for Patent Prosecution (2018 to 2021)
    • Pennsylvania: Recommended for Patent Litigation (2020 to 2021)

Memberships

  • Intellectual Property Owners, Inc.: Post Grant Patent Practice Committee

Industries

Prior Positions

  • Woodcock Washburn LLP
    • Policy Committee
    • Finance Partner

Admissions

  • U.S. Court of Appeals, Federal Circuit
  • U.S. District Court, Eastern District of Pennsylvania
  • U.S. Patent and Trademark Office, Registration No. 33,307
  • Pennsylvania

Education

  • J.D., Boston College Law School, 1989, cum laude
  • M.S., Organic Chemistry, University of Pennsylvania, 1985
  • B.S., Chemistry, Georgetown University, 1983