Experience in this Practice Area:

  • Managing a portfolio of trademarks for a diversified healthcare and medical device company, including preparing freedom to use opinions for trademarks, registering marks in the U.S. and a number of foreign countries, policing and enforcing trademark rights, and conducing adversary trademark proceeding here and abroad to enforce trademark rights.
  • Prosecuting a family of patent applications directed toward medical devices with biocompatible coatings that temper the immune response when the devices are implanted in the body.
  • Working closely with a start-up medical device company to identify design modifications that would better enable the drafting of patentable claims for its product.
  • Assembling a legal team of biologists, chemical engineers, and an electrical engineer with industry experience in control systems, to assist a biologics preparation and instrumentation client with IP matters.
  • Working with FDA counsel with respect to crossover issues such as patent listing and extension.
  • Participating in global patent strategy meetings for commercial products.
  • Conducting IP due diligence related to ownership or distribution of products for clients partnering with Big Pharma.
  • Assisting a medical device company in procuring a patent that facilitated the client’s next round of funding, allowing it to move from prototype phase to product development phase. By working closely with the inventor and the USPTO examiner, we were able to secure the patent in less than one year.
  • Representing medical device start-up companies in investment transactions, from series A through initial public offering (IPO).
  • Assisting a start-up company in securing patent coverage for its product, by investigating the patent landscape in a crowded technology field during the initial stages of product development.
  • Participating in the due diligence, documentation, and integration phases of multimillion-dollar acquisitions of start-up companies by multinational pharmaceutical companies.
  • Providing strategic advice to a Swiss biotech company throughout the sale of its ophthalmology unit and guiding the company through IP due diligence activities in a deal worth up to $500M.
  • Winning an opposition in the European Patent Office brought by an international medical device developer and manufacturer against our client, an international health care technology company.

Case studies

 
 
Our Thinking Expands Yours

The client, a small biotech company, wanted to expand its patent estate in order to be an attractive acquisition candidate. » read more

News & Events

USPTO and the Federal Service for Intellectual Property, Patents and Trademarks of the Russian Federation (ROSPATENT) Launch Patent Prosecution Highway Pilot Program on September 1 » read more

Giulio A. DeConti Selected to Best Lawyers in America » read more

CAFC Invalidates Patent Covering Methods of Using Gemzar » read more

December 2, 2010
Peter Dini presents "Antibodies: Overcoming Patentability Hurdles and Claim Drafting Strategies for New Technological Developments" at the ACI Biotech Patents Conference » read more

August 30, 2010
James Velema and Peter Dini present "Patenting of Therapeutic Antibodies" to the NRC Biotechnology Research Institute, Montreal, Canada » read more

August 26, 2010
Brian Trinque presents "Nonobviousness of Chemical Inventions" at 240th ACS National Meeting » read more

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