Patents

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Experience in this Practice Area:

• Obtaining an Australian patent for a private client and subsequently negotiating a license for the patent to an Australian telecommunications carrier.
• Assisting a major automotive company with the intellectual property directed to components of one of the company’s market-leading automobiles.
• Developing a patent strategy and portfolio for a client that specializes in environmentally friendly techniques for converting biomass into components that can be used for fuel and industrial production.
• Working with a clean technology company developing cellulos ethanol to develop and expand their patent portfolio.
• Developing worldwide patent portfolios for multiple companies that create fuel cell technologies for hybrid power systems and automobiles.
• Representing multiple start-up companies (in technologies ranging from wind turbine power to biomass production) in developing and implementing patent strategies, including obtaining patent protection and negotiating licensing arrangements.
• Assisting a major industrial products company in securing intellectual property directed to a new product line.
• Assisting a network management systems company in developing and executing an IP strategy for its 100+ U.S. and foreign patents. The resulting strategy helped to increase patent-related revenues.
• Representing a monoclonal antibody company in IP matters in its $400M acquisition by a major pharmaceutical company.
• Representing a leading Boston, MA-based venture capital firm in IP due diligence for its $40M investment in a European biotech company.
• Actively participating in global patent strategy meetings related to commercial products of several large pharmaceutical companies.
• Developing an extensive international patent portfolio that covers a first-of-its kind human monoclonal antibody drug marketed by a large pharmaceutical company.
• Writing a patent application that covers a leading European biotechnology company’s antibody, which constituted the intellectual property for a $2 billion deal with a large pharmaceutical company.
• One of our clients, the University of Massachusetts Medical School, holds several patents and patent applications in the field of RNA interference (RNAi), including Dr. Craig Mello's seminal patents relating to the discovery of RNAi, for which he and Dr. Andrew Fire recently received the Nobel Prize in Medicine. We represent the university's interests in this exciting technological field.
• Developing a patent portfolio strategy to protect a manufacturer’s market-leading position, including conducting a cost-benefit analysis and assessment of potential return on investment for possible patent applications.
• 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.
• Participating in global patent strategy meetings for commercial products.
• 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.
• Developing a patent portfolio for the leading producer of canned and bottled juice drinks in North America directed to nutraceutical products isolated from fruit seeds which have beneficial effects when administered to subjects, including treating and reducing the occurrence of breast cancer.
• 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.
• Assisting the manufacturer of custom-designed semiconductor structures in developing a patent portfolio and leveraging its expertise in heterojunction chip technology to enter the thin-film solar cell market.
• Working with a leading developer of technical computing software to modify its flagship software product, making it possible to design around infringement claims by a large international software company.
• Obtaining the underlying IP for and representing a software company specializing in linking knowledge bases operated by multiple information providers in the acquisition of the company's assets by a consortium that provides online computer library linkage.
• Representing a biopharmaceutical company in its exclusive worldwide licensing agreement with a global pharmaceutical company for the development and co-commercialization of a first-in-class, fully human monoclonal antibody in a deal worth up to $530M.