Corporate

Patent Counseling and Prosecution

Strategic advice to protect and enhance patent portfolios

Clients in the life sciences, pharmaceutical, biotech and medical technology industries depend on Dechert’s experienced team for the full range of patent counselling needs. We are a stand-alone practice with top-tier clients who bring us their most important and complicated prosecution work.

We represent clients at all stages of their business lifecycle, from discovery through development, clinical testing and product launch. Recognizing the dual imperative of maximizing patent portfolio value and aggressively protecting patents worldwide, we strive to enhance our clients’ value and afford them the broadest protection.

Our strategic advice is informed by years of industry knowledge and experience as well as significant scientific and technical acumen. Many members of our practice hold a Ph.D. or other advanced degrees in the life sciences and have either postdoctoral or industrial research experience above and beyond their expertise as lawyers.

A track record for obtaining patent coverage beyond client expectations

Dechert’s patent counseling and prosecution team represents pre-public and discovery stage biotechnology pharmaceutical companies as well as established, publicly traded international pharmaceutical companies in worldwide patent portfolio development – from prosecution and counseling to due diligence, transactions, and infringement defense and avoidance. We routinely represent clients in patent disputes before the U.S. Patent and Trademark Office (USPTO). Our lawyers also have extensive experience and much success in developing strategies to protect second generation drugs and biologics.

Our patent counseling team has extensive “real-world” experience, drafting and prosecuting to issuance patent applications across the entire scope of pharmaceutical and biotech inventions. We also advise clients on the potential impact of new laws and proposed legislation on their IP portfolios and strategies.

Comprehensive services tailored to specific client needs

Our approach to patent counseling is to partner with our clients to achieve their strategic business goals. By combining high-level technical expertise and practical legal insight, we provide a full range of patent services, from proper documentation and disclosure of discoveries and inventions to patent procurement, licensing and enforcement.

We focus on building solid patent positions that deliver competitive advantage and value over time, whether the client is a pre-public discovery-stage company or a large publicly traded company.

 

Experience
  • Merck KGaA in its due diligence and negotiation of patent terms for a licensing agreement with Vertex Pharmaceuticals for the worldwide development and commercialization of four promising research and development programs that represent novel approaches to the treatment of cancer. As part of the agreement, Merck KGaA will license two clinical-stage programs targeting DNA damage and repair, along with two additional novel pre-clinical programs. Vertex will receive an upfront payment of US$230 million, in addition to royalties on future net sales. Merck KGaA will assume full responsibility for the development and commercialization of all the programs.
  • Padlock Therapeutics in its IP due diligence and negotiations with GlaxoSmithKline resulting in exclusive license to GSK’s proprietary PAD4 inhibitors to kick off Padlock’s novel approach to treating inflammatory disorders by targeting PAD4. After Dechert developed and implemented Padlock’s internal patent strategy, the company was acquired by Bristol-Myers Squibb for US$600 million.
  • Merz Pharmaceuticals in numerous IP diligence analyses regarding acquisition and in-license opportunities in the highly competitive aesthetics space, including performing freedom to operate analyses associated with competitor patents, for skin-lightening compounds and formulations, anti-wrinkle agents and formulations, and aesthetic devices and injectables.
  • Nimbus Therapeutics in developing its patent portfolio leading to an exclusive worldwide license agreement with Genentech, a member of the Roche Group, to discover and develop small molecule inhibitors of interleukin-1 receptor-associated kinase 4 (IRAK4).
  • Nimbus Therapeutics in devising and implementing a patent portfolio strategy resulting in a strategic immunology alliance with Celgene Corporation to develop programs for patients with autoimmune disorders.
  • Nimbus Apollo in developing and implementing a drug discovery patent strategy and, later, a focused patent strategy protecting the lead drug candidate in human clinical trials. Subsequently, the company was acquired by Gilead Sciences for US$1.2 billion.
  • PureTech Health in an IP due diligence and negotiations with Novartis resulting in the creation of resTORbio and in-license of two clinical stage assets for treating immunosenescense, an aging-related decline in the immune response that increases risk of cancer and other diseases.
  • Applera (now Life Technologies) on patent enforcement strategies in the United States, Japan and Germany on a patent directed to real time PCR.
  • Avila Therapeutics in developing its patent portfolio leading to its acquisition by Celgene Corporation for US$925 million. 
  • Multiple venture firms in IP diligences resulting in the creation of numerous new pharmaceutical and biotech companies.
A go-to firm for life sciences industry leaders

Dechert’s patent counseling and prosecution team is actively engaged in virtually all sectors of the life sciences industry, which is why many high-profile companies entrust us with their most critical patent development, protection and enforcement issues. Our team is consistently recognized as having the World’s Leading Patent Professionals by Intellectual Asset Management’s IAM Patent 1000.

Notable Dechert clients include:

  • Abbott Biotherapeutics (Facet Biotech)
  • AbbVie Biotherapeutics
  • Aldeyra Therapeutics
  • Arrakis Therapeutics
  • AstraZeneca (Omthera Pharmaceuticals)
  • Atlas Venture
  • Biogen
  • Bristol-Myers Squib (Padlock Therapeutics)
  • Bicycle Therapeutics
  • Celgene Corporation
  • Daiichi Sanko
  • Elan Pharmaceuticals
  • Endo Pharmaceuticals
  • Ferring Pharmaceuticals
  • GlaxoSmithKline
  • Intezyne Technologies, Inc.
  • Janssen Pharmaceutica
  • Merck & Co. (Cubist Pharmaceuticals)
  • Merck KGaA
  • Merz Pharmaceuticals
  • Nimbus Therapeutics
  • Norgine Pharmaceuticals
  • Onconova Therapeutics
  • Pfizer
  • Purdue Pharma
  • PureTech Health
  • Vertex Pharmaceuticals
  • X4 Pharmaceuticals
  • Zealand Pharma
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