David Gass is a registered patent attorney for biotechnology companies, pharmaceutical companies, diagnostics companies, universities, and research institutions, helping clients develop and implement IP strategies to protect and commercialize life-improving biotechnology inventions. He assists clients with patentability analyses, drafting and prosecuting patent applications, and maximizing patent term and patent life-cycle for products. He also assists clients with freedom-to-operate issues relative to the IP rights of others. He has experience with appeals and inter partes proceedings before the U.S. Patent and Trademark Office, including interferences, reexamination and reissue proceedings. David also assists clients with international patent portfolio management and licensing, and advises counsel in foreign patent prosecution and opposition proceedings. He has lectured students and industry in the United States and Europe on intellectual property matters, including chairing of panels at the 2010–2013 BIO International Conventions on “IP Issues Affecting Biomarker-Based Diagnostics,” and the 2017 BIO International Convention on "Innovation and the Human Microbiome."
In recognition of his outstanding patent work in life sciences, David has been featured as a “Life Sciences Star” in LMG Life Sciences. He was selected by his peers for inclusion in the 2016–2022 editions of The Best Lawyers in America© in the practice area of Patent Law, was named “Biotechnology & Life Sciences Patent Lawyers of the Year–USA” in the Corporate LiveWire 2016 Legal Awards, and was recognized in 2015 by the Corporate LiveWire Legal Awards in the “Excellence in Patent Prosecution–Illinois” category. He has also been selected by Leading Lawyers, a division of Law Bulletin Media as a “Leading Lawyer.”
- Authored BRIEF FOR AMICI CURIAE to the U.S. Supreme Court for prominent biotechnology, pharmaceutical, and university trade organizations in Sequenom, Inc. v. Ariosa Diagnostics, Inc.
- Counseled research institution and prosecuted portfolio of patent applications relating to angiogenic treatments for ischemic conditions and anti-angiogenic treatments for cancer and ophthalmological conditions. Continued prosecution of portfolio for a startup company built around these technologies.
- Secured more than 20 U.S. patents and numerous foreign counterpart patents for prominent platform technology for large pharmaceutical company.
- Assisted with U.S. interference and subsequent prosecution of patent application for important plant biotechnology invention.
- Provided freedom-to-operate counseling to clients that wished to develop products without infringing valid intellectual property rights of third parties.
- Counseled clients in U.S. interferences and assisted foreign counsel in European and Australian opposition proceedings.
David has assisted clients with intellectual property in a wide variety of biotechnology disciplines, including the following:
- Recombinant DNA, protein, and antibody technologies
- Therapeutic antibodies, including humanized antibodies, and other immunotherapies
- Cell culture and microbiome technologies
- Genomics, proteomics, and epigenetics
- Medical diagnostic and prognostic tests, reagents, and kits that use genomic, metabolomic, and traditional markers to diagnosis disease or identify susceptibility, for diseases such as cancers, cardiovascular disease, and diabetes
- Angiogenesis and anti-angiogenesis technologies and circulatory disorders
- Gene therapy, interfering RNA, CRISPR, and antisense technologies
- Vaccines and adjuvants, including cancer vaccines
- Genetic modification of plants and animals, including transgenic organisms
- Cancer diagnosis and therapies, and oncogenes
- Anti-viral therapies, including protease inhibitors
- Polymerase chain reaction and mass spectrometry
- Nanotechnology and industrial biopolymers
- Prions, Alzheimer's disease, and neural regeneration
- Inflammation and arthritis
- Metabolic diseases and diabetes
- Therapeutic methodologies and formulations
- Stem cell therapies
- Food and beverage formulations
Background and Credentials
David received his J.D. from University of California, Berkeley, Boalt Hall School of Law (Berkeley Law). He attended the University of Michigan as an undergraduate, and graduated with Highest Honors and Highest Distinction with a B.S. in cell and molecular biology.
Prior to attending law school, he worked for two years at the University of Michigan as a researcher studying plant mitochondrial genetics.
- University of California, Berkeley, Boalt Hall School of Law (J.D.)
- University of Michigan (B.S., with highest honors)
- Cell and Molecular Biology
- U.S. Patent and Trademark Office
Publications and Presentations
- "The Modified Standards for Section 706.07(b)'s first action final rejections (FAFR)," 2020 IPO Virtual Annual Meeting – U.S. Patent Office Practice Committee Meeting, Co-Presenter, September 16, 2020.
- "MPEP Updates on First-Action Final Rejections," 2020 IPO Virtual Annual Meeting – Pharmaceutical & Biotechnology Issues Committee Meeting, Co-Presenter, September 16, 2020.
- "A USPTO Examination Policy Change You May Have Missed," Law360, August 19, 2020.
- "Innovation and the Human Microbiome: Patent Eligibility and IP Protection,” 2017 BIO International Convention, June 20, 2017.
- “USPTO Subject Matter Eligibility Guidelines,” USPTO Patent Subject Matter Eligibility Roundtable, November 14, 2016.
David also has spoken at companies and universities in Europe and the United States to educate attorneys, researchers, and administrators about the nature and importance of intellectual property rights and how to procure them, and about current developments in biotechnology patent law.
Community and Professional Involvement
David has served on committees for organizations such as Intellectual Property Owners Association (IPO) and Illinois Biotechnology Industry Organization (iBIO) that promote strong intellectual property rights and foster the growth of the biotechnology industry. In 2014 and 2015 he co-authored IPO's comments on the U.S. Patent and Trademark Office's guidance memoranda and training materials pertaining to determining subject matter eligibility, particularly as to inventions involving laws of nature, natural phenomena, and natural products.