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
  • Aldeyra Therapeutics on patent portfolio management and IP counseling to support their ocular drug candidate for the treatment of a variety of ocular disorders including macular degeneration, allergic conjunctivitis, uveitis, dry eye, and Sjogren-Larsson Syndrome. In addition to securing global patent protection for their drug candidate, clinical indications, and formulations, we guide the company through intellectual property investigations conducted by investors and potential partners.
  • Ferring Pharmaceuticals in connection with its acquisition of Rebiotix Inc. (RBX), a late-stage clinical microbiome company that has pioneered the application of microbiome therapy. Assessment of the strength of the Rebiotix patent portfolio was a critical aspect of the deal as the IP was the major asset acquired. The acquisition expands Ferring’s reach into the microbiome space.
  • Kymera Therapeutics on its strategic R&D collaboration with Vertex Pharmaceuticals to advance small molecule protein degraders against multiple targets. Kymera is eligible to receive more than US$1 billion as part of the collaboration.
  • 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.
  • 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.
  • Pfizer in securing patent protection for Ibrance® (palbociclib), an FDA-approved oral drug for first line treatment of HR-positive/HER2-negative breast cancer, the most common type of breast cancer (70% of all cases). This representation also includes management of Pfizer’s patent term extension (PTE) strategy for Ibrance® and involves extensive dialog and negotiation with the U.S. Patent and Trademark Office.
  • PureTech Health, a clinical-stage biopharmaceutical company, on IP-related aspects of its US$1 billion deal with Roche to advance its milk-derived exosome platform technology for the oral administration of antisense oligonucleotide platform.
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 Sankyo
  • 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
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