Michael Muczynski and Kimberly L. Berkowski, Ph.D. Provide Facts and Perspective on Patents in Suit for Pharmaceutical Publication BioPharm Insight

June 8, 2011

Michael Muczynski and Kimberly L. Berkowski, Ph.D., were recently quoted in articles by BioPharm Insight, known as “The Leading Provider of Intelligence to the Biotechnology & Pharmaceutical Industry.”

In the article titled “Boehringer's Pradaxa: Potential future generic challengers to face steep hurdle to challenge patent protection—attorneys,” Mr. Muczynski commented on the strength of Boehringer’s patent in suit covering Pradaxa (dabigatran etexilate, an anticoagulant), and how it may stand-up to challenges by generic drug manufacturers. He discussed the prosecution history of the patent in the United States Patent and Trademark Office, prosecution of counterpart patents around the world, and the importance of both genus and species claims in the patent. Dr. Berkowski commented on claimed chemical structures and addressed an inquiry regarding potential tautomerization.

In the article titled “Mylan faces uphill battle to prevail in Tarceva trial decision; parties in tough fight with respect to later-expiring patents,” Mr. Muczynski commented on the strength of a Reissue patent covering Roche/Genentech and Astellas Pharmaceuticals’ Tarceva product (erlotinib, an EGFR inhibitor), and the difference in scope of the claims achieved through the Reissue process.

Partner Michael Muczynski advises clients on all issues relating to patent strategy and portfolio management, with particular emphasis in patent prosecution and opinions in pharmaceutical and other chemical fields. His clients benefit from his previous litigation experience involving generic pharmaceuticals, in anticipating potential issues and strengthening patents through prosecution.

Patent Agent Kimberly L. Berkowski, Ph.D. prosecutes patent applications in the chemical, pharmaceutical, and polymer/material sciences. Her technical research and teaching background enable her to work seamlessly with scientists and lay persons alike to produce quality work and favorable results. She has extensive bench experience with the synthesis, characterization, and application of small molecules, polymers, peptides, and biomaterials. Dr. Berkowski also brings exceptional technical communication skills that she cultivated during her years of teaching in academia.

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