Practices & Industries

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Biotechnology

Pioneering a Position of Leadership

The field of biotechnology poses unique challenges 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 and maximize patent life cycles.  We have procured, enforced and/or defended patents relating to a number of billion-dollar products.

Additionally, our work with universities and other non-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 large biotechnology legal practice group includes lawyers, patent agents and technical specialists with broad experience in a variety of technical disciplines, including DNA, RNA, protein and antibody therapeutics and diagnostics, plant biotechnology, industrial technology and research platforms, nanotechnology, and interdisciplinary inventions.  The vast majority of our members have advanced degrees, such as Ph.D.s, masters and M.D. degrees along with biotechnology industry experience.

Our biotechnology practice spans all aspects of intellectual property, including:

  • Patent and trademark prosecution (including patent reexamination and reissue proceedings)
  • Litigation
  • Patent term extensions and adjustments to maximize patent term
  • Interferences (priority of invention contests)
  • Counseling clients on foreign oppositions and litigation
  • Licensing and other transactions
  • Validity and freedom-to-operate opinions and counseling
  • Due diligence for licensing, acquisitions, and public offerings

Case Studies

  • On July 29, 2014, Immune Design Corporation announced that it successfully raised $60 million in its initial public offering.  The Firm played a primary role in the IP due diligence relating to the financing.  Immune Design is a clinical-stage immunotherapy company employing next-generation in vivo approaches to enable the body’s immune system to fight disease. The company’s technologies are engineered to activate the immune system’s natural ability to create and/or expand antigen-specific cytotoxic T cells, while enhancing other immune effectors, to fight cancer and other chronic diseases.  Immune Design selected Marshall, Gerstein & Borun as lead external advisor on their intellectual property strategy, and the Firm helped obtain issued patents covering ZVex™ and GLAAS™, the company’s two discovery platforms.  See this press release: http://ir.immunedesign.com/releasedetail.cfm?ReleaseID=862719.
  • Lily Rin-Laures and Sharon Sintich were members of the team prosecuting US Patent 8,063,182 related to Amgen’s FDA approved drug, ENBREL (entanercept).  ENBREL was first approved in the U.S. in 1998 for moderate to severe rheumatoid arthritis and was later approved to treat children and adolescents with moderate to severe juvenile rheumatoid arthritis (now called juvenile idiopathic arthritis) in 1999.  In 2004, ENBREL was approved in the U.S. to treat adult chronic moderate to severe plaque psoriasis.  Amgen issued a press release November 22, 2011 announcing the issuance of the ‘182 patent. Click here to read the Amgen release.
  • The Firm’s extensive experience and persistence were rewarded after two decades of pursuing patent claims covering an FDA-approved drug, Actimmune™.  Based on patent applications originally filed in 1982, the patents expire in 2022.  The long prosecution history included appeals and interferences before the Patent Office’s Board of Patent Appeals and Interferences, as well as an appeal to the Court of Appeals for the Federal Circuit.  Actimmune™ is approved for the reduction of the frequency and severity of serious infections related to chronic granulomatous disease (CGD) and for delaying time to disease progression in patients with severe, malignant osteopetrosis.

Representative Clients

  • Amgen Inc.
  • BioMarin Pharmaceutical Inc. 
  • deCODE genetics
  • InterMune, Inc.
  • Ludwig Institute for Cancer Research
  • NorthShore University HealthSystem
  • Merck Serono
  • XOMA Ltd.
  • Numerous start-up companies, universities and hospitals

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