Daniel M. Becker, M.D., a registered patent attorney, handles all aspects of patent counseling in the life sciences, including patent portfolio development, peer review and restructuring of patent portfolios, life cycle management, transactional and financing IP due diligence, and both offensive and defensive patent strategy, serving clients primarily in the pharmaceutical, biotechnology and medical device industries.
Domestically, Dr. Becker's post-issuance practice includes ex parte appeal, ex parte and inter partes reexamination, including reexamination concurrent with infringement litigation, reissue and interference. He is currently lead counsel in 10 inter partes reexamination proceedings and one ex parte reexamination. As lead counsel in a 2006 interference, Dr. Becker led the Dechert team that won judgment that Dechert's client was alone entitled to claims to the interfering subject matter, preserving the client’s company-critical U.S. patent protection and freedom to operate, and then prosecuted to issuance a reissue of the client’s involved patent.
In addition, Dr. Becker has substantial foreign patent experience, including prosecution in a wide variety of jurisdictions, formal appearance at oral proceedings before the Examining Division of the European Patent Office, informal interviews with European Examiners, strategic input in European Oppositions, and successful appeal to the EPO Technical Board of Appeals.
In the 2012, 2011 and 2010 editions of Chambers USA, Dr. Becker was recognized as a nationwide leading lawyer in the area of Life Sciences: IP/Patent Litigation, and as a "key individual" contributing to Dechert's Nationwide Life Sciences ranking. Dr. Becker was named a "Life Science Star" in the Euromoney Legal Media Group's 2012 inaugural Expert Guide to Life Science Attorneys.
Dr. Becker serves as a patent advisor to Nature Reviews Drug Discovery, published by the Nature Publishing Group.
Significant Representations
- Pevarello v. Lan. Represented Newron Pharmaceuticals SpA in an interference against Purdue Neuroscience Co. relating to therapeutics for neuropathic pain. Newron prevailed on substantive motions. Prosecuted to allowance reissue of Newron's involved patent.
- Bolognesi v. Shafferman. Represented Trimeris Corp. in an interference against the NIH relating to the peptide T20, which is currently marketed as FUZEON to treat HIV. Trimeris successfully dissolved the interference by demonstrating that there was no interference in fact.
Education
Harvard College, A.B., 1980, magna cum laude, Phi Beta Kappa
Detur Prize (1978); Edwards Whitaker Prize (1977); John Harvard Scholarship (1977, 1978)
Stanford University School of Medicine, M.D., 1987, with research honors
Stanford Alumni Medical Student Scholar (1983-1985); Lupus Foundation of America medical student research grant (1984-1985); Pharmaceutical Manufacturers Association Foundation medical student research grant (1982)
Wistar Institute and MIT, postdoctoral research (1987-1991)
Postdoctoral Fellowship, American Cancer Society; Special Postdoctoral Fellowship, Leukemia Society of America
Stanford Law School, J.D., 1995,
Judicial Extern, Judge Vaughan Walker, District Court, Northern District of California (1994)
Court Admissions
United States Patent and Trademark Office
United States District Court for the Northern District of California
United States Court of Appeals for the Federal Circuit
Bar Admissions/Qualifications
California
Publications and Lectures
Dr. Becker's legal and technical publications and presentations include:
- Speaker, “Stratifying and Quantifying Freedom-to-Operate Risks,” C5 9th International Forum on Freedom to Operate Forum, Frankfurt (May 9, 2012)
- Panelist, “Building, Financing & Selling a Life Sciences Company in the New Era,” Symposium Co-Sponsored by Dechert LLP and Plesner law firms, Copenhagen, Denmark (April 26, 2012)
- Speaker, “America Invents Act: Nuts, Bolts & Strategic Implications of ‘Patent Reform,’” Private Event, San Francisco, CA (October 18, 2011) (with Ann M. Caviani Pease, Ph.D.)
- Speaker, “Contending with third party patent claims,” Workshop, C5 8th International Freedom to Operate Forum, Munich (May 19, 2011)
- Speaker, “10 Things European Practitioners Should Know About US Patent Law and Practice,” Presentation, London (March 3, 2011)
- “Safe Harbour, Muddy Waters,” Intellectual Property Magazine (August 2010) (with Alexander H. Swirnoff, Ph.D.
- Speaker, “The Biosimilar Licensure Pathway (Part 2),” Dechert/Association of Corporate Counsel co-sponsored symposium (July 22, 2010)
- Speaker, “The Biosimilar Licensure Pathway (Part 1),” Dechert/Association of Corporate Counsel co-sponsored symposium (June 24, 2010)
- Speaker, “U.S.-Specific Invalidity Issues in FTO Analysis,” C5 7th International Conference on Freedom-to-Operate, Munich (May 27, 2010)
- Speaker, “Recent Case Law on (In)validity,” C5 7th International Conference on Freedom-to-Operate, Munich
(May 26, 2010) - “Judicial developments in the US Hatch-Waxman infringement safe harbor,” Expert Opinion on Therapeutic Patents, Vol. 20, No. 4 (April 2010) (with Alexander H. Swirnoff, Ph.D.)
- “Patent Term Adjustment After Wyeth v. Kappos,” Law360 (January 28, 2010) (with Robert W. Ashbrook)
- “Who Is Your Money On?” Corporate Counsel (January 7, 2010) (with Robert W. Ashbrook)
- Speaker, “Pre-diligence IP Peer Review,” Dechert LLP Symposium on “EU Life Sciences: Surviving and Thriving in a New Competitive Landscape”, London (November 10, 2009)
- Speaker, “Recent U.S. Case Law on (in)validity,” C5 6th International Freedom to Operate Forum, London
(April 20-21, 2009) - Speaker, “Maintaining a Solid Financial Foundation: Raising Cash and Reigning-in the Spendthrift Child,” Dechert LLP and San Francisco Bay Area Association of Corporate Counsel seminar on “Surviving the Lean Times: Corporate and IP Strategies for Life Sciences Companies,” Millbrae, CA (April 7, 2009)
- “Thriving and Surviving in Lean Times,” FDLI Update Magazine (March/April 2009) (with David E. Schulman and Joel I. Falk)
- Speaker, “Privilege and Confidentiality in Freedom to Operate Opinions,” C5 5th International Freedom to Operate Forum, London (June 11, 2008)
- Speaker, “International Intellectual Property Strategies for Life Science Companies,” 2007 All Hands Meeting of the Silicon Valley Association of General Counsel, Santa Clara, CA (Dec. 2007)
- Speaker, “Legislative and Regulatory Update: Patents and Politics in the 110th Congress,” American Conference Institute’s Conference on Maximizing Pharmaceutical Patent Life Cycles, San Francisco (June 2007)
- Speaker, “Lessons Learned from Big Pharma: Minimizing Risk at Each Stage of a Therapeutic Product's Life Cycle,” Dechert LLP Client Seminar, Millbrae, CA (May 2007)
- Speaker, “New Strategies for Obtaining Pharmaceutical Patent Extensions,” Master Class for brand-name pharmaceutical companies presented at American Conference Institute’s Conference on Maximizing Pharmaceutical Patent Life Cycles, San Francisco (June 2006)
- “Indirect Infringement,” Nature Reviews Drug Discovery 5:181 (March 2006)
- Speaker, “Claim Construction After Phillips,” American Conference Institute’s Fourth National Tactical and Practical Guide to Freedom to Operate Conference, San Francisco (October 2005)
- “Obviousness-Type Double Patenting,” Nature Reviews Drug Discovery (October 2005)
- “Inherent Anticipation,” Nature Reviews Drug Discovery (June 2005)
- “Third-Party Re-Examination at the USPTO,” Nature Reviews Drug Discovery (April 2005)
- “Written Description,” Nature Reviews Drug Discovery (October 2004)
- “Reach-Through Claims: How Far a Reach?,” Nature Reviews Drug Discovery (August 2004)
- “The Patentable Utility of Genes,” The National Law Journal (December 2003)
- “Cloning and Functional Analysis of Heterologous Eukaryotic Transcription Factors in Yeast,” in Transcription: a Practical Approach, BD Hames and S Higgins (eds.), Oxford University Press (1993)
- “Transformation of Yeast,” in Current Protocols in Molecular Biology, Ausubel et al. (eds.) (1992)
- “Protocol for High-Efficiency Yeast Transformation,” in Handbook of Electroporation and Electrofusion, Chang et al. (eds.), Academic Press (1991)
- “High-Efficiency Transformation of Yeast by Electroporation,” in Guide to Yeast Genetics and Molecular Biology, Methods in Enzymology 194:182-187, Guthrie et al. (eds.) (1991)
- “A DNA Encoding a Human CCAAT-Binding Protein Cloned by Functional Complementation in Yeast,” Proc. Natl. Acad. Sci. USA 88:1968-1972 (1991)
- “Striking Conservation of TFIID in Schizosaccharomyces Pombe and Saccharomyces Cerevisiae,” Nature 346:291-294 (1990)
- “Fusion of Adenovirus E1A to the Glucocorticoid Receptor by High Resolution Deletion Cloning Creates a Hormonally Inducible Viral Transactivator,” Mol. Cell. Biol. 9:3878-3887 (1989)
- “The Genes of the Murine T-cell Receptor,” in Human T Cell Clones, Feldmann et al. (eds.),
The Humana Press (1985) - “Variability and Repertoire Size of T-cell Receptor Vα Gene Segments,” Nature 317:430-434 (1985)
- “A Third Type of Murine T-cell Receptor Gene,” Nature 312:31-35 (1984)
- “Genomic Organization and Sequence of T-cell Receptor ß-chain Constant and Joining-Region Genes,” Nature 310:387-391 (1984)
- “Genomic Organization, Rearrangement and Chromosomal Localization of a Murine T Cell Receptor Gene Complex,” Regulation of the Immune System, UCLA Symposia in Molecular Biology (New Series), 369-376 (1984)