Carl A. Morales Ph.D.

Carl-Morales

Carl A. Morales Ph.D.

Partner

New York | Three Bryant Park, 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 patent rights for clients in the biotechnology, chemistry, pharmaceutical, and medical device industries.

Dr. Morales has particular expertise in developing and prosecuting patent portfolios for FDA-approved or soon-to-be approved drug products, including for products involved or expected to be involved in litigation.  He also devises and executes strategies to secure second and third generation patent coverage that extends pharmaceutical product exclusivity (e.g., formulation, dosing regimens, and impurity profiles).  FDA-approved drug products on which Dr. Morales has worked include Ibrance®, OxyContin®, Targiniq®, Fasenra™, Epanova®, Sitavig®, Oravig®, Bosulif®, Zetia®, and Vytorin®. 

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 prepared numerous patent term adjustment petitions and patent term extension applications and conducted Orange Book listing investigations.

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.

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 Southern District of New York
  • United States Patent and Trademark Office
  • United States District Court for the Eastern District of New York
Memberships
  • American Bar Association
  • American Intellectual Property Law Association
  • New York State Bar Association
  • American Chemical Society