McCarter & English LLP

McCarter & English LLP’s renowned IP team has more than 125 IP lawyers, technical specialists and patent agents with industry experience and graduate degrees in engineering and life sciences (including 32 PhDs and two MDs). We draw on our experience in patent prosecution and litigation, technology licensing and transfer, corporate transactional, US Food and Drug Administration regulation and general business matters to assist clients in building and managing patent portfolios that best serve their strategic business goals – whether developing patent portfolios for pre-clinical products of early-stage companies or blockbuster biologics for major pharmaceutical companies.

We work with client patent committees, research and development and product development groups, laboratory and research teams, engineers and scientists to determine appropriate patentable subject matter in order to devise patent prosecution strategies to maximise US and international protection.

Patent prosecution

Members of McCarter’s patent prosecution team have advanced degrees in fields such as molecular biology, cell biology, immunology, biochemistry, microbiology, organic chemistry and inorganic chemistry, and have years of pharmaceutical industry experience – including former scientific and in-house counsel positions – and former patent office examiners well versed in the intricacies of the USPTO.

Our life sciences IP group prosecutes patent applications involving biomarkers, gene therapy, protein formulations, diagnostic assays, crystallography, ribonucleic acid interference, biofuels, genetic engineering, small molecule pharmaceuticals, medical devices, polymer chemistry, formulations and plant biotechnology. We prosecute antibody patents, including human antibodies, humanised antibodies, multi-specific and multivalent antibodies, antibody production and clinical uses of antibodies.

We serve our life sciences clients in all facets of IP development, maintenance and enforcement. Our attorneys are as experienced and innovative when it comes to the development of strategies for protecting critical core technologies as they are in patenting new innovations based on clients’ immediate and long-term business goals. We help some of the biggest names in the biotechnology, pharmaceutical, university and life sciences fields to build and manage complex patent portfolios in order to protect blockbuster biotech and small molecule drugs and develop global strategic plans.

Post-grant review

The America Invents Act has shifted the landscape for patent challenges from the courts to the USPTO. Validity will primarily be decided in the USPTO and then shift to the federal district courts for infringement. Now, a successful challenge or defence requires both experienced patent prosecutors with significant knowledge of post-grant challenges before the USPTO and experienced trial lawyers for the discovery phase and oral proceedings before the board. We have a proven track record in inter partes re-examination, inter partes review and post-grant review of covered business method patents as both experienced prosecutors and trial lawyers. We have a multitude of active inter partes reviews and covered business method reviews and additional petitions that have already resulted in settlement. Team members have industry and academic expertise in material science, chemistry, biology, physics, engineering and software, and have worked in the most prestigious labs in the United States, Europe and China. Our trial lawyers have decades of experience of high-profile and successful trials and alternative dispute resolution.

Litigation

An intelligent approach to the pursuit of clients’ business objectives is a hallmark of our litigation practice. In 2017 McCarter was ranked fourth nationwide as a Go-To Firm for Patent Plaintiffs by Lex Machina’s patent litigation year-in-review. Our patent litigation team advocates for clients in patent cases, Hatch-Waxman cases and Markman hearings in the courts nationwide. Our cases involve pharmaceuticals, biotechnology, medical devices, surgical techniques, chromatography, immunochemical diagnostic devices, electrochemical biosensors, polymer plastics and medical lasers. McCarter combines broad experience in patent cases and IP disputes with a depth of technical and scientific knowledge, a thorough understanding of patent and IP law, experienced mastery of litigation strategy and in-depth trial skills.

Transactions

Our IP transactions team provides strategic advice to companies in all critical phases of development – from aiding pre-clinical early-stage companies seeking seed funding to structuring joint ventures and acquisitions for major pharmaceutical companies with blockbuster biologics. In coordination with our patent specialists, the team performs due diligence for licensing, acquisitions and funding of companies. This multidisciplinary approach, applied to every aspect of the transaction (eg, deal structure, closing strategies and research, development, manufacturing, marketing and regulatory compliance guidance), results in timely and cost-effective legal services for clients.

Contact details

McCarter & English LLP
265 Franklin Street
Boston MA 02110
United States

Professional contacts

Other offices

  • Boston
  • East Brunswick
  • Hartford
  • New York
  • Newark
  • Philadelphia
  • Stamford
  • Washington DC
  • Wilmington

Sample client list

  • AbbVie Laboratories
  • Berg Pharma LLC
  • BioDelivery Sciences International
  • Hayward Industries

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