The Patent 1000 focuses exclusively on patent practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal patent expertise.
Silver - Firms
McCarter & English has a strong local as well as national presence. Firmwide, there are 100 IP and IT lawyers, technical specialists and patent agents on deck, who come together to support rights holders as they build their portfolios, cut deals and battle their competitors in the courtroom. The fulcrum around which the practice turns in Wilmington is Daniel Silver, an experienced lead and local counsel who makes light work of complex life sciences disputes. According to sources: “Judges really like Dan and he brings tremendous value to his clients.”
Silver - Firms
McCarter & English has been incredibly effective at translating lessons learned in litigation into success in prosecution and vice versa, making its patent services comprehensive and sophisticated. Especially beneficial in this regard is the presence of high-calibre individuals such as Beverly Lubit, whose patent procurement, counselling and deal negotiation skills have been maintained at the highest level over a long and flourishing career in the life sciences. Lubit is engaged in – and wise regarding – litigation issues, but the people to call when trial expertise is needed are John Flaherty and Scott Christie. Flaherty has extensive experience in life sciences and healthcare related cases and is a repository of trust in Hatch-Waxman litigation. Having handled diverse IP and non-IP cases, Christie has sharpened his advocacy skills to a fine point.
Recommended - Firms: prosecution
Recommended - Firms: transactions
Bronze - Firms: litigation
McCarter & English has a sizeable roster of IP lawyers, technical specialists and patent agents spanning nine regional offices, giving it the breadth and depth required to service the complete patent needs of its clients. Its prosecutors communicate on a one-to-one level with engineers, scientists, lab teams and others, enabling them to dial in their patent protection strategies perfectly. The outfit has a polished line-up of life sciences experts in Boston, including Jonathan Sparks, Steven Davis, Maria Laccotripe Zacharakis, Jill Ann Mello and Marcie Clarke, all of whom have PhDs. Sparks chairs the IP group and is an excellent relationship partner who covers a lot of ground for his patrons, including patent and trademark prosecution, licensing and IP due diligence for financing and transactions. “Steve Davis is knowledgeable regarding all the nuances of patent filing and is a patient lawyer who is great to work with at the strategic level. He engages well with chemists and biologists from the very beginning of the patenting process, and executes with precision nationally and internationally.” He has in-house and industrial scientific research experience on his résumé. Another global thinker, local managing partner Zacharakis is a leading biotechnologist. Mello adds value whether preparing patent applications, conducting freedom-to-operate analysis, running IP due diligence projects or supporting litigation efforts. Clarke is a fount of insight and analysis regarding patent monetisation. In Lee Carl Bromberg and Erik Paul Belt, McCarter & English has two redoubtable trial lawyers, standing it in good stead for when difficult infringement issues arise.
McCarter & English’s renowned IP team has more than 100 IP lawyers, technical specialists and patent agents with industry experience and graduate degrees in engineering and life sciences (including 30 PhDs and two MDs). We draw on our experience in patent prosecution and litigation, technology licensing and transfer, corporate transactional, 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 identify 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
Teamwork between patent attorneys and trial attorneys is essential in modern patent litigation. Many patent disputes today involve not just actual or threatened federal court litigation, the domain of trial attorneys, but also parallel administrative actions at the PTAB, which is a tribunal of the US Patent Office, the domain of patent attorneys. These PTAB proceedings are designed to provide faster and cheaper methods for testing the validity of patents and thus have become popular, and even essential, components of patent enforcement and defence strategy. Accordingly, at McCarter, our patent attorneys and trial attorneys work closely to provide coordinated strategy and execution between the PTAB and court proceedings. 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. 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. Our patent litigation team counsels leading life sciences companies with a pairing of experienced trial strategy and scientific depth. We advocate for clients in patent, International Trade Commission, Hatch-Waxman cases and Markman hearings in 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 jury 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.
Jurisdiction