Carl A. Morales Ph.D.

Carl Morales Dechert intellectual property lawyer New York

Carl A. Morales Ph.D.


New York | Three Bryant Park, 1095 Avenue of the Americas, New York, NY, United States of America 10036-6797
+1 212 641 5601 | +1 212 698 3599


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.

In 2020, Dr. Morales was recognized by The Legal 500 US for Intellectual Property: Patents: Prosecution and by IAM Patent 1000 for Prosecution in New York. In 2019, he was named a Next Generation Lawyer for Industry Focus: Healthcare: Life Sciences by The Legal 500 US. 

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.

  • Royalty Pharma in its US$650 million royalty purchase agreement with PTC Therapeutics, Inc. to acquire a portion of PTC’s royalty interest in Risdiplam.

  • Royalty Pharma in its US$255 million acquisition from Agios Pharmaceuticals, Inc., of sales-based royalty rights on worldwide net sales of Bristol Myers Squibb’s IDHIFA® (enasidenib).

  • Royalty Pharma in its US$220 million acquisition of AiCuris Anti-infective Cures GmbH’s partial royalty interest in Prevymis™ (letermovir).

  • Royalty Pharma in its US$94 million acquisition of Massachusetts General Hospital’s royalty interest in Entyvio (vedolizumab).

  • Royalty Pharma in its US$330 million acquisition of Eisai Co., Ltd.’s royalties on sales of Epizyme Inc.’s soon-to-be-FDA-approved drug tazemetostat.

  • Royalty Pharma in its US$100 million equity investment (with options to invest up to an additional US$100 million) in Epizyme Inc. 

  • Royalty Pharma in its US$827 million acquisition of Ligand Pharmaceuticals’ royalties on sales of Promacta.
  • 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
  • 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
  • American Bar Association
  • American Intellectual Property Law Association
  • New York State Bar Association
  • American Chemical Society
Speaking Engagements
  • China Pharma IP Summit 2019 — Shanghai, China (October 23-25, 2019)

    Speaker, "Keys to Maximizing U.S. Patent Term.”
  • Managing Intellectual Property US Patent Forum 2019 — New York, NY (April 3-4, 2019)

    Speaker, “Counteracting the flux of patent eligibility” panel. Topics include: Tracking the evolution of subject matter eligibility in the US, Consequences of Alice for patent owners: new section 101 guidance?, Meeting the demands of new technologies, and Integrating open-source and patents. For more information, visit the event page
  • Identifying Patent Examiner Biases and Making Them Work Using Legal Analytics — Legal Analytics and the Business of Law Summit, New York (November 18, 2014)

    Speaker, panel discussing the use of predictive analytics to identify and overcome examiner biases to improve outcomes, increase speed, and create client value.