John P. Rearick, Ph.D. is a partner in Dechert's intellectual property group, leveraging his knowledge of pharmaceutical and chemical technologies to tailor strategic IP protection that aligns with clients’ immediate and long-term business objectives. His practice also entails conducting comprehensive due diligence assessments for acquirers and investors.

With over a decade of experience, Dr. Rearick has successfully obtained more than 200 U.S. patents for his clients. He has considerable experience in securing global patent coverage for innovative small molecule treatments, particularly in the spheres of oncology, infectious disease, and neurodegenerative disorders. His work with pharmaceutical clients encompasses strategies to extend exclusivity for their drug product portfolios. Additionally, he counsels clients on contentious patent matters before the Patent Trial and Appeal Board (PTAB) and navigating post-grant challenges related to product-critical patents in Europe and other international jurisdictions.

Dr. Rearick was also the recipient of a Howard Hughes Medical Institute Predoctoral Fellowship in Biological Sciences and a Certificate of Distinction in Teaching from Harvard College.

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
    • 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
    • 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
    • PTAB Bar Association
    • Boston Patent Law Association
    • Massachusetts LGBTQ Bar Association