John P. Rearick, Ph.D.
Partner | Boston
John P. Rearick, Ph.D.

Key Matters

Patent Prosecution and Counseling

  • Celgene in a global portfolio covering covalent small molecule inhibitors in a crowded patent landscape, including claims to protein-inhibitor conjugates agnostic to inhibitor structure.
  • Forma Therapeutics in executing a strategic series of patents filings to extend exclusivity period for phase II drug candidate.
  • A large pharmaceutical company in procuring the first Orange Book listable patent for an already approved drug.
  • A small pharmaceutical company on patent filing strategy for a small molecule series showing activity against multiple targets of clinical interest.
  • Saudi Aramco in a European opposition and appeal involving defending a key patent on innovative polymers and challenging third party patent rights in foreign jurisdictions.
  • Saudi Aramco in a patent invalidation trial and appeal in South Korea.
  • A large pharmaceutical company in conducting extensive pre-ANDA litigation analysis of a newly approved drug.
  • Underwriters and private companies in IP due diligence analyses and opinions in the context of initial public offerings.
  • Forma Therapeutics as lead IP counsel in its US$278 million initial public offering.

Patent Trial and Appeal Board

  • Valo Early Discovery, Inc. (f/k/a Integral Early Discovery, Inc.) in an appeal of a PTAB post-grant review decision involving a patent protecting novel inhibitors of ubiquitin-specific protease 7 (USP7).
  • Progenics Pharmaceuticals, Inc. in a PGR proceeding challenging a patent directed to compounds for preparing 18F-radiolabeled Prostate-Specific Membrane Antigen (PSMA)-targeting conjugates.
  • Forma Therapeutics, Inc. in a PGR proceeding defending a patent protecting novel inhibitors of ubiquitin-specific protease 7 (USP7).
  • Saudi Arabian Oil Co. in an IPR proceeding challenging a patent directed to polycarbonates.

Includes matters handled at Dechert or prior to joining the firm.

  • Rising StarMassachusetts Super Lawyers
  • Intellectual Property – Patents: Prosecution (Including Re-examination and Post-Grant Proceedings)The Legal 500 US 2022
  • Fully Exploiting Your Innovations: Best Practice in Innovation Harvesting – Moderator, Life Sciences Patent Network North America (May 2022)
  • Patent Strategies in Light of Clinical Trial Disclosures – Moderator, Life Sciences Patent Network Live (October 2021)
  • 1L Boot Camp: OCI Interviewing – Panelist, Boston College, Newton Centre (April 2019)
  • Patents 101 – Presenter, Harvard University (December 2018)
  • Translational Research in Biomaterials Seminar Series – Presenter, Boston University
  • The Legal Profession: Explore Careers – Panelist, Harvard University
  • Synthesis of Skeletally Diverse Small Molecules with Non-Natural Motifs: A Boronic Ester Annulation Strategy – Poster presentation, Broad Institute of Harvard and MIT Annual Meeting
  • Synthesis of Skeletally Diverse Small Molecules with Non-Natural Motifs: A Boronic Ester Annulation Strategy – Speaker, HHMI Meeting of Predoctoral Fellows, Chevy Chase, Maryland
  • Design and Synthesis of a Novel Series of 1,2-Disubstituted Cyclopentanes as Small, Potent Potentiators of 2-Amino-3-(3-hydrox-5-methyl-isoxazol-4-yl)propanoic Acid (AMPA) Receptors – Co-author, Journal of Medicinal Chemistry
  • Asymmetric Synthesis of Umuravumbolide – Co-author, Organic Letters
Services Industries
    • Purdue University, B.S., 2001
    • Harvard University, A.M., 2004
    • Harvard University, Ph.D., Chemistry, 2007
    • Boston University School of Law, J.D., 2013
    • Massachusetts
    • United States Patent and Trademark Office
    • PTAB Bar Association
    • Boston Patent Law Association
    • Massachusetts LGBTQ Bar Association