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Am Law 100 firm with practices in Business, Digital Assets and Data Management, Intellectual Property, Labor & Employment, Litigation and Tax.

Home | BakerHostetler

Lee Rosebush, Marc Wagner Explain Sections 503A and 503B of Federal Food, Drug and Cosmetic Act in AHLA Article

Ronald Baumgarten, Tung Nguyen, James Perry Author Article on Trade Policy for Treasury & Risk

Cleve Glenn Speaks at Smart Business Dealmakers Conference

Peter Roskam Quoted in Fortune Article on Renouncing US Citizenship

Members of BakerHostetler’s IP Life Sciences and Advanced Materials Patent Prosecution team draw on their thorough knowledge of IP law to help clients meet these and other strategic business goals.

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Our attorneys guide companies deftly through the labyrinth of global patent laws, leveraging our analytical talents and superior grasp of each area of the life sciences. With our counsel and support, companies establish and defend the validity of their own patents; develop patent portfolios or buy or lease them; and circumvent other companies’ patents, including by challenging those that should never have been granted.

We work with companies to develop and implement a global patent strategy tailored to their unique needs, and use custom software tools to efficiently track and manage even the most complex global patent estates.

Comprehensive IP service

BakerHostetler’s IP attorneys handle every type of pharmaceutical product, including small molecules, biologics and drug-device combinations, as well as new and existing chemical entities. We create, develop, overhaul, repair and maintain worldwide patent estates for new chemical entities, existing chemical entities, over-the-counter products, antibodies, proteins, vaccines, and cell and gene therapies.

Clients trust BakerHostetler with patent portfolios involving pioneering research and active pharmaceutical ingredients and patent portfolios that protect products subject to abbreviated new drug application litigation and biosimilars litigation and opposition.

When critical inventions have been tied up in complex, protracted prosecution, we help companies secure allowance to use them. We provide patentability assessment, freedom-to-operate analyses, patent landscaping and “white space” analyses, Orange Book listings, pre- and post-launch exclusivity counseling, and pre-litigation counseling. Our team is frequently engaged as prosecution counsel for portfolios asserted in Hatch-Waxman litigations.

For due diligence, our technical mastery and legal acumen enable us to effectively evaluate patent portfolios and provide thorough, practical advice to stakeholders – whether for Series A, B or C funding rounds; initial public offerings (IPOs); or licensing.

Highly educated and knowledgeable

Our attorneys and agents have backgrounds in the life sciences and chemical arts and hold advanced degrees in immunology, organic chemistry, genetics, biochemistry and molecular biology. Our analyses and counseling are based on substantial experience in the life sciences combined with a pragmatic understanding of our clients’ business needs.

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<ul>
<li>Chambers USA
<ul>
<li>Intellectual Property ‒ Ohio (2011 to 2024)</li>
<li>Intellectual Property ‒ Georgia (2017 to 2024)</li>
<li>Intellectual Property ‒ Pennsylvania (2007 to 2024)</li>
<li>Intellectual Property ‒ Washington (2023, 2024)</li>
<li>Intellectual Property: Litigation ‒ District of Columbia (2015 to 2024)</li>
<li>Intellectual Property: Patent Prosecution ‒ District of Columbia (2015 to 2024)</li>
<li>Intellectual Property: Trademark, Copyright &amp; Trade Secrets ‒ New York (2014 to 2024)</li>
</ul>
</li>
<li>The Legal 500 United States
<ul>
<li>Intellectual Property – Copyright (2015 to 2024)</li>
<li>Intellectual Property – Patent Litigation: Full Coverage (2015 to 2024)</li>
<li>Intellectual Property – Patents: Licensing – Firms to Watch (2024)</li>
<li>Intellectual Property – Patents: Prosecution (Including Re-Examination and Post-Grant Proceedings) (2015 to 2024)</li>
<li>Intellectual Property – Trade Secrets (Litigation and Non-Contentious Matters) (2017 to 2024)</li>
</ul>
</li>
<li>Intellectual Property – Trademarks: Non-Contentious (Including Prosecution, Portfolio Management and Licensing) (2019 to 2024)</li>
<li>BakerHostetler’s IP Group was named as one of the “Top 10 Patent Firms” and also recognized an “Award Winning Law Firm 2024” by The Patent Lawyer Magazine for North America – Northeast.</li>
<li>Daily Report Intellectual Property Litigation Department of the Year (2017)</li>
<li>Global IP Awards recognized BakerHostetler as its U.S. Trademark Litigation Firm of the Year for 2022-2024</li>
<li>IAM Patent 1000 ‒ DC Metro Area (2015 to 2024); Georgia (2019 to 2024); Illinois (2019 to 2024), Pennsylvania (2015 to 2024); Washington (2015 to 2024)</li>
<li>WTR 1000 – The World’s Leading Trademark Professionals ‒ Firm and attorney rankings (2013 to 2024)</li>
<li>U.S. News – Best Lawyers “Best Law Firms” – National Rankings
<ul>
<li>Copyright Law (2012 to 2024)</li>
<li>Litigation – Intellectual Property (2012 to 2024)</li>
<li>Litigation – Patent (2014 to 2024)</li>
<li>Patent Law (2014 to 2024)</li>
<li>Trademark Law: National (2015 to 2024)</li>
</ul>
</li>
</ul>

Mark H. Krietzman

Tayan B. Patel

Kevin P. Flynn

Tracy U. Palovich, Ph.D.

David N. Farsiou

Felicity E. Groth

David B. Hoffman

Ronald C. Kern Jr., Ph.D.

Stephanie A. Lodise, Ph.D.

Joseph Lucci

Aaron B. Rabinowitz

Jeffrey H. Rosedale, Ph.D.

Rakesh H. Mehta, Ph.D.

Laura R. Gordon, Ph.D.

Timothy J. Doyle, Ph.D.

Toni-Junell Herbert

Michael Schwartz, Ph.D.

Donald V. Scaltrito, Ph.D.

Scott R. Conley, Ph.D.

Timothy A. Worrall, Ph.D.

S. Anna Sargsyan, Ph.D.

Elizabeth A. Browning, Ph.D.

Daniel Bucca, Ph.D.

Anna Mirôn, Ph.D.

Kerisha A. Bowen, Ph.D.

Philadelphia

Partner

IP Intelligence Report

Federal Circuit Rebukes District Court for Patent Eligibility Decision Involving Extended-Release Formulation Patent

Winston Kirton, Payal Cramer Author Alert Republished in LexisNexis Practical Guidance

FDA Issues Draft Guidance on Diversity Action Plans

In the Wake of the Amgen Decision, the USPTO Will Continue To Use the Wands Factors when Evaluating Enablement

Kern authors article for IP Litigator on implications of Supreme Court Amgen ruling

The Supreme Court Again Declines To Reevaluate Subject Matter Eligibility of Diagnostic Claims

Federal Circuit Affirms Lack of Enablement of Functional Antibody Claims

Method of Treatment Claims Are Not Invalid for Lacking Written Description or Enablement Simply Because the Treatment Is Not Safe or Efficacious in Some Patients

Congress Seeks to Eliminate the Judicial Exceptions to Patent Eligibility

Will the Supreme Court Reevaluate the Subject Matter Eligibility of Diagnostic Claims?

Now What? The Supreme Court Addresses Enablement

Federal Circuit Inventorship Decision Literally Saves the Appellant’s Bacon – and Reiterates the Framework for Assigning and Analyzing Inventorship

World IP Day

PTAB Rulings Highlight the Importance of a Claimed Agent’s Stated Function

Ron Kern Authors Article About Supreme Court’s Written Description Requirement

The Supreme Court Again Declines to Address the Written Description Standard

Supreme Court Denies Review of the Written Description Requirement

Federal Circuit Develops the ‘At Once Envisage’ Standard of Anticipation and Affirms the Importance of Specialized Considerations in the Chemical Arts

Supreme Court to Address What it Means to Have an Enabling Disclosure

Characterization of Claim Elements as “Conventional” Results in Section 101 Subject Matter Ineligibility

BakerHostetler’s Intellectual Property Group Provides Look Back at Highly Successful 2021

Federal Circuit Requires Definitive Written Description Support for Quantitative Values and Ranges

Podcast: Navigating the Fine Line Between Obviousness and Obviousness-Type Double Patenting

BakerHosts

Navigating the Fine Line Between Obviousness and Obviousness-Type Double Patenting

Fabian Koenigbauer a Presenter on Non-Patent/Regulatory Exclusivity

Lee Rosebush a Speaker at FDA Compounding Quality Virtual Conference

Timothy A. Worrall Bolsters BakerHostetler’s Intellectual Property Practice Group

BakerHostetler Advises Alterra Energy on Key IP Aspects of Deal with Neste

Promoting the Progress of Science

Promoting the Progress of Science: Written Description and Enablement

Promoting the Progress of Science: Avoiding Inherent Obviousness

Promoting the Progress of Science: Avoiding Inherent Anticipation

Promoting the Progress of Science: How Clinical Stage Patent Strategies Can Bring New Pharmaceuticals to Market

Intellectual Property

IP Technology

IP & Technology Transactions and Outsourcing

Patent Litigation

Trademark and Copyright

Industries

Life Sciences

<ul>
<li>Johnson &amp; Johnson has been a BakerHostetler client for well over 25 years. Our many IP projects with J&amp;J have included developing and managing a patent portfolio for a drug treatment now approved by the U.S. Food and Drug Administration and expanding that portfolio to protect continued research and innovation.</li>
<li>To protect combination products and drug regimens in light of inherent bias in the law against such subject matter, we devised exclusivity strategies for J&amp;J’s darunavir patent portfolio and analyzed patent applications and clinical data, developing sophisticated legal arguments for patentability.</li>
<li>We represented Teva Pharmaceuticals in its exclusivity strategies for TREANDA and BENDEKA, used to treat people with chronic lymphocytic leukemia and indolent B-cell non-Hodgkin’s lymphoma. We also helped Teva with exclusivity strategies and patent portfolio development for AUSTEDO, used to treat chorea.</li>
<li>We developed patent portfolio strategies for Tyra Pharmaceuticals, and when the company went public, its IPO raised more than $170 million. We did the same for Prelude Therapeutics, which we have represented since its inception. Prelude’s IPO was also very successful.</li>
<li>Teleflex Inc. manufactures a wide array of medical technologies (including devices) in the vascular, respiratory, cardiac and anesthesia areas, and its products are used in critical care and surgery. We handle all of the company’s patent and trademark prosecution matters across nearly 30 divisions.</li>
<li>We represent RoundTable Healthcare Partners in the IP aspects of numerous pharmaceutical and medical device acquisitions and sales, including its sales of CorePharma LLC and other companies to Impax Laboratories Inc. for $700 million and of Aspen Surgical Products Holdings Inc. to Hill-Rom Holdings Inc. for $400 million.</li>
<li>For medical device company DePuy Synthes, we handle patent prosecution across its range of technologies, including trauma bone plate technology, spinal implants and craniofacial devices. We achieved a favorable settlement of an underlying patent infringement case when the client went through an IPO related to dynamic spinal rods.</li>
<li>We counseled Dicerna Pharmaceuticals in its licensing of Tekmira Pharmaceuticals’ proprietary lipid nanoparticle technology for delivery of one of its RNA interference candidates. This resulted in potentially $24.5 million in milestones, in addition to ongoing royalties.</li>
</ul>

IP Life Sciences and Advanced Materials

IP Life Sciences and Advanced Materials

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