For innovation in all facets of biotechnology, Joseph A. Williams, Jr., Ph.D. helps you secure the intellectual property rights you want, through world-wide patent prosecution and related proceedings. Having been with Marshall, Gerstein & Borun since 1993, Dr. Williams is able to help you get where you want your intellectual property to take you by combining his legal experience with extensive bench experience gained from doctoral training in biochemistry and post-doctoral research in molecular biology and microbiology.  Whether you are a start-up protecting your core platform technology, a not-for-profit protecting your technology to shop for licensing, or a company protecting your clinical trial candidate or approved therapeutics, you benefit from his reliable advice and portfolio guidance.

Recent Client Work

  • Worked from application drafting and beyond FDA approval on prosecution of a peptide mimetic therapeutic, developing a patent prosecution strategy that ultimately gave rise to a US and foreign IP portfolio providing protection for the eventually-approved compound, along with compound modifications, formulations and methods-of-use before the compound hit the market.  Product sales are expected to eventually exceed one billion US dollars annually.

  • Drafted and prosecuted the patent application that secured for a start-up company, world-wide protection for an expression vector that became the first commercial product for the company.  Today, the expression "vector technology" is licensed to a multitude of entities and is also the cornerstone for a growing in-house contract manufacturing process for the start-up company's successor.

  • Worked with a university and its licensors to protect all aspects of an FDA- and EMEA-approved vaccine with over 60 patents around the world and sales easily expected to exceed one billion US dollars annually.  

Detailed Biography

Representative Experience

Dr. Williams has extensive patent prosecution experience in a wide variety of biotechnology disciplines, such as:

  • Recombinant therapeutics 
  • Peptide therapeutics, including mimetics 
  • Antibody technology 
  • Vaccine technology 
  • Pharmaceutical formulations 
  • Nanobiotechnology 
  • Diagnostic and therapeutic methods
  • Polynucleotide products for amplifying, sequencing, isolating and modifying polynucleotides
  • Microparticle compositions and delivery systems
  • Implant compositions
  • Animal models, including transgenics

Background and Credentials

Joseph A. Williams, Jr., Ph.D. brings significant experience in the field of biotechnology, having worked as a technical specialist and patent agent before becoming an attorney as well as completing extensive scientific research.  He works with clients in a wide variety of biotechnology matters involving domestic and foreign patent prosecution, U.S. interference and foreign opposition proceedings, non-infringement/validity opinions and portfolio management.

Dr. Williams graduated from the DePaul University College of Law in 1999.

Previously, he graduated from North Carolina State University in 1980 with a B.S. in Chemistry and the University of Tennessee at Knoxville in 1988 with a Ph.D. in Biochemistry.  His graduate research involved study of heterologous regulation of gene expression and isolation of nuclear factors that mediate specific gene expression.  Dr. Williams’ post-doctoral research at the Louisiana State University in New Orleans focused on cell cycle-dependent regulation of gene expression (1988-1990, Department of Biochemistry and Molecular Biology) and bacterial assays to screen for inhibitors of viral proteases (1990-1992, Department of Microbiology, Immunology and Parasitology).

Representative Matters

Boyle* v. Gorman
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Chee v. Drmanac*
U.S. Patent and Trademark Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

McDonald v. Miyazaki*
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Eaton v. Miyazaki*
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Chandrasekher* v. Liang
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Zymogenetics, Inc. v. Kirin Brewery Company, Limited*
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Kirin Brewery Company, Limited* v. Genentech, Inc.
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Opposition re: Amgen Inc.*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition
Area(s) of practice: Pharmaceuticals

Opposition re: ICOS Corporation*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition
Area(s) of practice: Biotechnology

*Party Represented

Short Biography

Education

  • DePaul University College of Law, J.D.
  • University of Tennessee, Knoxville, Ph.D., Biochemistry
  • North Carolina State University, B.S., Chemistry

Practices

Industries

Admissions

  • Illinois
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Patent and Trademark Office

Joseph A. Williams, Jr., Ph.D.

Partner

For innovation in all facets of biotechnology, Joseph A. Williams, Jr., Ph.D. helps you secure the intellectual property rights you want, through world-wide patent prosecution and related proceedings. Having been with Marshall, Gerstein & Borun since 1993, Dr. Williams is able to help you get where you want your intellectual property to take you by combining his legal experience with extensive bench experience gained from doctoral training in biochemistry and post-doctoral research in molecular biology and microbiology.  Whether you are a start-up protecting your core platform technology, a not-for-profit protecting your technology to shop for licensing, or a company protecting your clinical trial candidate or approved therapeutics, you benefit from his reliable advice and portfolio guidance.

  • T.312.474.6630
  • F.312.474.0448

Joseph A. Williams, Jr., Ph.D.

Joseph A. Williams, Jr., Ph.D.

Recent Client Work

  • Worked from application drafting and beyond FDA approval on prosecution of a peptide mimetic therapeutic, developing a patent prosecution strategy that ultimately gave rise to a US and foreign IP portfolio providing protection for the eventually-approved compound, along with compound modifications, formulations and methods-of-use before the compound hit the market.  Product sales are expected to eventually exceed one billion US dollars annually.

  • Drafted and prosecuted the patent application that secured for a start-up company, world-wide protection for an expression vector that became the first commercial product for the company.  Today, the expression "vector technology" is licensed to a multitude of entities and is also the cornerstone for a growing in-house contract manufacturing process for the start-up company's successor.

  • Worked with a university and its licensors to protect all aspects of an FDA- and EMEA-approved vaccine with over 60 patents around the world and sales easily expected to exceed one billion US dollars annually.  

Detailed Biography

Representative Experience

Dr. Williams has extensive patent prosecution experience in a wide variety of biotechnology disciplines, such as:

  • Recombinant therapeutics 
  • Peptide therapeutics, including mimetics 
  • Antibody technology 
  • Vaccine technology 
  • Pharmaceutical formulations 
  • Nanobiotechnology 
  • Diagnostic and therapeutic methods
  • Polynucleotide products for amplifying, sequencing, isolating and modifying polynucleotides
  • Microparticle compositions and delivery systems
  • Implant compositions
  • Animal models, including transgenics

Background and Credentials

Joseph A. Williams, Jr., Ph.D. brings significant experience in the field of biotechnology, having worked as a technical specialist and patent agent before becoming an attorney as well as completing extensive scientific research.  He works with clients in a wide variety of biotechnology matters involving domestic and foreign patent prosecution, U.S. interference and foreign opposition proceedings, non-infringement/validity opinions and portfolio management.

Dr. Williams graduated from the DePaul University College of Law in 1999.

Previously, he graduated from North Carolina State University in 1980 with a B.S. in Chemistry and the University of Tennessee at Knoxville in 1988 with a Ph.D. in Biochemistry.  His graduate research involved study of heterologous regulation of gene expression and isolation of nuclear factors that mediate specific gene expression.  Dr. Williams’ post-doctoral research at the Louisiana State University in New Orleans focused on cell cycle-dependent regulation of gene expression (1988-1990, Department of Biochemistry and Molecular Biology) and bacterial assays to screen for inhibitors of viral proteases (1990-1992, Department of Microbiology, Immunology and Parasitology).

Representative Matters

Boyle* v. Gorman
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Chee v. Drmanac*
U.S. Patent and Trademark Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

McDonald v. Miyazaki*
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Eaton v. Miyazaki*
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Chandrasekher* v. Liang
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Zymogenetics, Inc. v. Kirin Brewery Company, Limited*
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Kirin Brewery Company, Limited* v. Genentech, Inc.
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology

Opposition re: Amgen Inc.*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition
Area(s) of practice: Pharmaceuticals

Opposition re: ICOS Corporation*
Boards of Appeal of the European Patent Office
Case Type(s): Opposition
Area(s) of practice: Biotechnology

*Party Represented

Short Biography

Joseph A. Williams, Jr., Ph.D.

Education

  • DePaul University College of Law, J.D.
  • University of Tennessee, Knoxville, Ph.D., Biochemistry
  • North Carolina State University, B.S., Chemistry

Practices

Industries

Admissions

  • Illinois
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Patent and Trademark Office
©2012 Marshall, Gerstein & Borun LLP