Timothy A. Worrall
Tara A. Nealey
Intellectual Property & Technology Litigation
Intellectual Property Counseling and Opinions
Polsinelli’s intellectual property attorneys are experienced in the full range of considerations in the biotechnology industry. We assist our clients in securing and defending their valuable intellectual property, often for clients with patent estates into the thousands. We understand that innovation is important to companies in the biotechnology space, and help our clients capture, leverage, and monetize their technological advancements.
Attorneys in the area of biotechnology include a deep team of Ph.D.s' who are highly trained in various specific technologies, giving them the ability to understand and protect complex inventions and scientific developments. They work collaboratively with a team of Patent Agents and Scientists with impressive education including Ph.D.’s in Pharmacology, Molecular Biology, Microbiology and Integrative Biology, and work experience including a faculty position in a university’s Department of Biology, a consultant for pharmaceutical and biotechnology companies and a position at the National Institute of Standards and Technology.
We have worked with antibodies and carriers, transgenic organisms, biosimilars, review of patent estate for licensing and divestiture.
Areas of technology in which we’ve worked include:
Additives for human and animal products – methods of production, new chemical compounds and manufacturing processes
Produce treatment technology
Established foundational patent portfolio for startup client with new viral encapsidation technology for delivery of RNAi molecules in agricultural applications, which provided basis for the client to negotiate two collaboration projects with two major agriculture companies.
Providing patent preparation and prosecution, patent portfolio management and freedom to operate advice to a Fortune 500 company regarding new CRISPR-cas genome editing tools and techniques.
Assisted in formulating and implementing strategy at publically traded bio-tech company to deal with influx of licensing demands through aggressive use of post grant proceeding. Results have substantially reduced client’s expected licensing costs resulting in increased profitability for multiple product lines.
Successfully argued against the institution of an Inter Partes Review (IPR) Petition filed by a large international animal health company against a composition patent owned by an international OTC animal health pharmaceutical company client. Based on arguments made in defense of the client’s patent, the Patent Trial and Appeal Board (PTAB) declined to institute IPR of any challenged claims.
Helped a company bring new animal health products to market by issuing freedom to operate opinions, drafting patient applications and working with executives to ensure entry into the marketplace and protection of intellectual property.
Conducted intellectual property due diligence for the acquisition of a biomarker testing product company by a leading molecular diagnostic company.
Negotiated a distribution/supply agreement between United States distributor and Korean manufacturing company covering distribution of immunochromatographic test kits for the qualitative detection of viruses affecting dogs or cats, including parvovirus, heartworm, and feline infectious peritonitis virus.
Represent patent holder and prevented Inter Partes Review of orthopedic implant assemblies for joining bone segments.
Represent patent holder in litigation relating to innovative knee and hip replacement systems.
Prosecute and manage portfolios related to trocar devices and wound closure devices.
Prosecute applications in technologies involving ultrasound technologies and related medical imaging systems.
Polsinelli Continues Intellectual Property Expansion Adding Biotech, Life Sciences Attorney David Clough in Chicago
May 15, 2017
“They do a great job laying out what the challenges are, what the obstacles are and how to get around them. They don’t just lay out the state of affairs; they go the extra step."
- Polsinelli Client
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