Industries

Biotechnology

Representative Client List

Marshall, Gerstein & Borun attorneys maintain an enviable position at the intersection of commerce and inspiration. As pioneers in the field of biotechnology intellectual property since the 1960s, we combine technical and legal acumen with extensive experience in planning and implementing intellectual property strategies for successful commercial products. 

Diverse Backgrounds and Experience
Our large biotechnology legal practice group includes lawyers, agents and technical specialists with broad experience in a variety of technical fields, including DNA, RNA, protein and antibody therapeutics and diagnostics, plant biotechnology, industrial technology and research platforms, nanotechnology, and interdisciplinary inventions. Nearly all members of our group have advanced degrees, such as Ph.D., master’s and M.D. degrees and/or relevant industry experience.

We have experience in all aspects of intellectual property practice involving biotechnology and pharmaceutical technologies, including:

  • Prosecution (including reexaminations, reissues and patent term extensions)
  • Litigation (U.S. and foreign)
  • Interferences (priority of invention contests)
  • Counseling clients on foreign oppositions
  • Licensing and other transactions
  • Validity and freedom-to-operate opinions
  • Due diligence for licensing or public offerings  

Strategies for Success
Key to success in the intellectual property arena is the ability to align business goals and patent strategy to protect commercial products, maximize the value of IP portfolios for out-licensing, navigate through competitors’ IP, and leverage IP for new business opportunities. The field of biotechnology poses unique problems for companies by virtue of science that is sometimes unpredictable and product development cycles that may take many years. We understand the development cycle and are able to work with clients to devise successful strategies and build U.S. and foreign patent portfolios to protect commercial products and processes. We have procured, enforced and/or defended patents relating to a number of billion-dollar products. 

Additionally, our work with universities and other not-for-profit organizations, start-ups and established publicly or privately held firms, including Fortune 500 companies, provides us with a 360-degree perspective and an uncommon view of new ideas, applications and opportunities for our clients.

We understand that clients have different needs and objectives depending on their stage of growth and development, and we help them to meet their goals at every stage. 

Our relationships with academia and industry, as well as our experience with executing IP strategies for both early stage product candidates and established marketed products, positions us as a cornerstone for the bridge between innovation and commercial success.

Representative Client List

  • Amgen Inc.
  • BioMarin Pharmaceutical Inc.
  • deCODE genetics
  • ICOS Corporation (A Wholly Owned Subsidiary of Eli Lilly) 
  • InterMune, Inc.
  • Introgen Therapeutics, Inc.
  • Ludwig Institute for Cancer Research
  • Monsanto Company
  • Novartis
  • Pfizer Inc. 
  • Serono, Inc.
  • XOMA Ltd.
  • Numerous start-up companies, universities and hospitals