Carl A. Morales Ph.D.

carl-morales

Carl A. Morales Ph.D.

Partner

New York | 1095 Avenue of the Americas, New York, NY 10036-6797
+1 212 641 5601 | +1 212 698 3599

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Carl A. Morales, Ph.D. is a registered patent attorney in the Patent Counseling and Prosecution practice of Dechert’s Intellectual Property group. Dr. Morales applies his scientific and legal training toward acquiring, protecting, and managing the patent rights of a variety of clients in the biotechnology, chemistry, pharmaceutical and medical device industries.

Dr. Morales has prepared and prosecuted patent applications in the U.S. Patent and Trademark Office and numerous foreign patent offices. His practice also includes pre-litigation case assessments; preparing patentability, validity, infringement, and enforcement opinions; and due diligence evaluations. Dr. Morales is experienced in post-grant patent proceedings when product-critical patents are at stake, such as reissues, reexaminations, and European oppositions. Dr. Morales has also performed patent term adjustment, patent term extension, and Orange Book listing investigations for pharmaceutical products and prepared corresponding opinions and petitions.

Prior to joining Dechert in 2012, Dr. Morales represented pharmaceutical clients in patent infringement litigation, particularly matters arising under the Hatch-Waxman Act.

Dr. Morales holds a Ph.D. in synthetic organic chemistry from Harvard University, where his doctoral research included designing and completing the first total synthesis of the anti-leukemia natural product Longithorone A as well as developing new stereoselective chemical reactions for organic synthesis.

Significant Representations

  • Eisai, Inc. v. Banner Pharmacaps, Inc., No. 2011-cv-901 (D. Del. Oct. 4, 2011) ANDA litigation involving the cutaneous T-cell lymphoma drug Targretin®.
  • Merck Sharp & Dohme Corp. et al. v. Mylan Pharma. Inc. et al., No. 2009-cv-6383 (D.N.J. Dec. 16, 2009) Prepared and prosecuted to grant a reissue of a patent asserted in ANDA litigation involving the cholesterol lowering drugs Zetia® and Vytorin®.
  • Wyeth Holdings Corp. et al. v. Sandoz Inc., No. 2009-cv-955 (D. Del. Dec. 11, 2009) ANDA litigation involving the tetracycline antibiotic drug Tygacil®.

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

Education
  • Carnegie Mellon University, B.S., Chemistry, Economics and Business, 1998, Highest Honors, Phi Beta Kappa, Mellon Scholarship in Science, NASA Undergraduate Research Fellowship
  • Carnegie Mellon University, M.S., Physical Organic Chemistry, 1999
  • Harvard University, A.M., Organic Chemistry, 2001, Hoffman-La Roche Fellowship in Organic Chemistry, GEM Graduate Fellowship
  • Harvard University, Ph.D., Synthetic Organic Chemistry, 2004, National Science Foundation Pre-Doctoral Fellow, The Christensen Prize for Outstanding Research Achievement, Derek C. Bok Award for Excellence in Teaching
  • New York University, J.D., 2009, Intellectual Property Law Scholar
Admissions
  • New York
  • Massachusetts
  • United States District Court for the Eastern District of New York
  • United States Patent and Trademark Office
  • United States District Court for the Southern District of New York
Memberships
American Bar Association
American Intellectual Property Law Association
New York State Bar Association
American Chemical Society