Samuel B. Abrams

samuel-abrams

Samuel B. Abrams

Partner

New York | Three Bryant Park, 1095 Avenue of the Americas, New York, NY, United States of America 10036-6797
+1 212 641 5684 | +1 212 698 3599

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Samuel B. Abrams is a partner in Dechert’s intellectual property group. Mr. Abrams focuses his practice on strategic patent counseling and prosecution and has extensive experience handling interference proceedings and European oppositions on behalf of companies in the biotechnology, chemical, pharmaceutical, drug delivery, diagnostics, medical device and immunology sectors. He has provided strategic patent advice for diverse clients such as AbbVie, Cubist Pharmaceuticals, Harvard University, Martek Biosciences Corp., Merck & Co. and Purdue Pharma. 

Mr. Abrams handles the strategic planning of patent portfolios, providing clients with pharmaceutical life cycle management, advice on novel ways to monetize their intellectual property and opinions on a full range of validity and freedom-to-operate/infringement matters. In addition, he has built patent portfolios consisting of more than a dozen Orange Book listed patents per drug for various drug products that maximize the drug’s patent exclusivity term.

Mr. Abrams was recommended for biotechnology law in the 2018 edition of The Best Lawyers in America and has consistently been named a “recommended expert” in IAM Patent 1000's New York rankings. In the 2019 edition, he is described as having “uncommon experience handling administrative contentious proceedings in Europe and is in hot demand as U.S. IP stakeholders take a greater interest in the run-up to the United Patent Court's establishment.” In addition to his ranked practice, Mr. Abrams has been involved in a variety of cases that have established significant legal precedent, including the drafting of the patent application establishing that a patent deposit of a nucleic acid probe can be utilized to satisfy the written description requirement of Section 112 – Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956 (Fed. Cir. 2002). 

Prior to going into private practice, Mr. Abrams was a member of the Procter & Gamble patent department, as well as the Merck patent department where he was responsible for Merck's antibiotic patent portfolio.

Experience
  • Martek Biosciences Corp. in a patent litigation suit against Nutrinova and Lonza over omega-3 fatty acids; obtained a jury verdict in favor of Martek on all counts, finding that the defendants had infringed all of Martek's patents at issue in the trial. On appeal, a Federal Circuit five-judge panel fully sustained the judgment for Martek, rejecting Lonza's appeal. Also, successfully represented Martek in multiple U.S. patent reexamination proceedings, European Oppositions and a German infringement action. These successes led Martek Biosciences being acquired for US$1.1 billion. 
  • Purdue Pharma regarding the patent prosecution of an application resulting in an issued patent covering low ABUK oxycodone that was patentable over the parent patent that was held invalid for obviousness under Section 103 by the Federal Circuit and yet still covers the drug product. 
  • Procter & Gamble in crafting a patent application regarding the multibillion dollar sanitary napkin product Always, where the resulting patent was successfully litigated in many jurisdictions throughout the world.
  • A major pharma company in a second generation patent family that protected a major prescription pharmaceutical, including prosecuting the application worldwide and providing support in IPR proceedings and oppositions in various countries.
  • Millennium Pharmaceuticals in an interference against Japan Tobacco Inc. relating to the T-cell costimulatory molecule ICOS. The interference was settled favorably for Millennium.
  • German Cancer Research Institute (GCRI), assignee of the Gissman patent application, in an interference against the National Institutes of Health relating to a vaccine to prevent cervical cancer. The vaccine is currently being marketed by Merck under the trade name Gardasil®. The interference settled favorably for the GCRI.
  • Fordham University in an interference against the University of New Mexico relating to heat shock proteins. Fordham prevailed on priority.
  • Roche in a three-party interference against Immunex Corporation and Dainippon Pharmaceutical Co., Ltd. involving recombinant DNA technologies for producing interleukin-1 alpha (IL-1 alpha) and an additional interference against Dainippon for methods of treating diseases using IL-1 alpha. The interferences were settled after a decision on motions and exchange of priority evidence.
  • Trimeris Corp. in an interference against the NIH relating to the peptide T20, which is currently marketed to treat HIV. Trimeris successfully dissolved the interference by demonstrating that there was no interference in fact.
  • Yale University in an interference against University of Alabama relating to a recombinant VSV virus that can be utilized in a vaccine against HIV. Yale prevailed on priority. 
Education
  • Rensselaer Polytechnic Institute, B.S., Biomedical Engineering, 1978
  • Case Western Reserve University School of Law, J.D., 1981
Admissions
  • New York
  • United States Patent and Trademark Office
Memberships
  • American Intellectual Property Association
  • New York Patent, Trademark and Copyright Law Association
Speaking Engagements
  • IP Issues to Consider When Launching a New Product — NJCCA 9th Annual In-House Counsel Conference with Sponsorship by Dechert LLP, Whippany, NJ (September 23, 2011)

    Speaker, "IP Issues to Consider When Launching a New Product" program explored the various different types of intellectual property rights that can be used to protect new products, the types of rights conferred and their geographic reach, and best practices for minimizing risks of infringement of third party rights. 
  • Tips For Successful Claim Drafting — Law Seminars International's Current Patent Claim Construction Practice, Philadelphia, PA (October 10, 2007)
  • The Fine Art of Interference Practice: Structures, Concepts, and Pitfalls — Biotech Patents Conference, San Francisco, CA (December 6, 2004)
  • Freedom-to-Operate and Interferences: Structures, Concepts and Pitfalls — Freedom-To-Operate Conference, New York, NY (November 10, 2003)