Fox Rothschild LLP

IAM Research

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

Showcasing outstanding depth in patent practice, Fox Rothschild has a large squad of technically adept attorneys – many of them with PhDs – standing ready to deploy on all complex patent briefs. The New Jersey office is the epicentre of its dynamic life sciences practice, which is a go-to for Rutgers University, the Rockefeller University, Bristol Myers Squibb and many others. The fulcrum around which the local group turns is Princeton managing partner Gerard Norton, whose strategic instincts are on point thanks to vast experience throughout all phases of the patent lifecycle. This year, special praise is awarded to Peter Butch, a savvy prosecutor and sought-after opinion giver: “Always well prepared, Peter has mastered all aspects of patent and contract law. He communicates well with inventors and has an excellent counselling touch. He prosecutes patents that net large compensation rewards when licensed.” No less brilliant are PhDs Jianming Jimmy Hao and Wansheng Jerry Liu, who add tremendous value with their cross-cultural US and China know-how and commercial wisdom.

Recommended - Firms: prosecution

In the words of senior in-house folks: “The patent prosecution team at Fox Rothschild is first rate.” The firm has a great mix of technical talent – PhDs and engineers with law degrees – complemented by lawyers with both contentious and non-contentious and litigation experience. Led by Deborah Somerville in the New York office, the team “understands clients’ needs to a tee”. Immersing herself in the business side of things, Somerville “makes sure your intellectual property supports your commercial goals and fulfils her partnering role with the utmost professionalism, dedication and comradery. She’s first rate and a great asset to have on side”. She is by no means the only eminent life sciences patent attorney on deck: local managing partner and molecular pharmacology PhD Janet MacLeod, chemistry PhD Christopher Glynn and patent group leader Dianna El Hioum are also great options in this space. MacLeod undertakes prosecution and portfolio management for Lytix Biopharma and is a critical component of teams supporting academic institutions. Glynn regularly collaborates with Somerville – for example, in handling extensive due diligence tasks on behalf of Healthcare Royalty Partners. El Hioum supervises prep and pros relating to therapeutic antibodies – including FDA-approved therapeutics – for various cancer treatments for a leading biotechnology company.

Recommended - Firms: prosecution

The well-specced patent practice at Fox Rothschild is staffed by 45-plus USPTO-registered attorneys alongside several patent agents, a technical specialist and an IP services director. The group – senior contact points for which can be found in Pennsylvania, New York, New Jersey, Colorado, Florida, DC, California and Minnesota – prosecutes in the United States and globally with rare efficiency, while maintaining a laser focus on quality. Providing strong leadership is Pittsburgh-based national IP department chair James Singer, who has a gift for realising clients’ business objectives through IP growth and development. He provides prosecution and strategic counselling services to high-profile innovators such as Xerox Corporation as well as many early-stage companies, which place a premium on his IP value creation know-how.

Firm Profile

When a company’s intellectual property is on the line, experience is important. And for more than 113 years, Fox Rothschild has been ready to help.

Founded in 1907 in Philadelphia, the firm now has more than 950 attorneys in 27 offices across the country. A full-service law firm that strives to provide clients the focus and service of a boutique, it handles a wide variety of legal matters – from antitrust to mergers and acquisitions, real estate to white collar criminal defence.

Intellectual property is of particular interest to the firm. Fox attorneys understand copyright, trademark and patent law and are capable of addressing legal issues around the globe – including in Asia, Europe and Israel.

For patents, they have experience with:

  • domestic and foreign prosecution, including re-examination, reissue, interference and post-grant review proceedings before the US Patent and Trademark Office (USPTO) and other authorities;
  • corporate due diligence investigations during licensing, acquisitions and other technology-related transactions to identify and define the scope of the relevant intangible assets;
  • counselling relating to new products, designs, structures, systems and methods;
  • opinions regarding patent invalidity and non-infringement;
  • patent portfolio strategies for early stage ventures and universities; and
  • drafting and negotiating international patent portfolio in-licensing and out-licensing agreements, security agreements using patents as collateral and agreements for the acquisition and sale of patent portfolios.

In 2020 alone, a team of 45-plus registered patent attorneys and agents secured more than 1,200 patents worldwide, including nearly 500 in the United States. About 28% of those were for either electronics or software patents, 22% were mechanical and 17% involved pharmaceuticals and biotechnology. The list includes a Turkish coffee maker, an automated air-pillow dispenser and a treatment of infectious diseases involving glucose uptake inhibitors.

Those statistics are, in part, the result of the firm’s ability to work closely with companies and their scientists, technicians and researchers. Fox’s IP department includes 110 professionals, more than a dozen of whom hold doctoral degrees in the sciences and engineering.

There is a patent agent who holds advanced degrees in biology, chemistry and computer science and previously served as a research fellow at a Fortune 500 pharmaceutical company. Another agent holds a PhD in physical chemistry and is a named inventor on three patent applications. And one of the attorneys is a veterinarian who attended law school after veterinary school.

The team also includes former USPTO examiners, former university and industry researchers and former in-house attorneys and corporate engineers. They understand the patent system because they have lived and worked in it for years.

Fox always works to keep an eye on a company’s bottom line, designing legal strategies that align with a client’s overall goals and setting about to achieve them efficiently and effectively. At the same time, the firm also tries to leverage intellectual capital for its maximum value. The attorneys are dedicated to procuring, monetising and enforcing our clients’ IP rights.

Over the years, Fox attorneys have represented a variety of clients, including Bristol-Myers Squibb, Merck, Rutgers University and Argo AI, an autonomous vehicle systems company. They’ve assisted Xerox Corporation with patent prosecution and strategic counselling regarding security printing technologies and MeiraGTx, a clinical-stage gene therapy company, perform IP due diligence that led to the successful closing of an initial public offering that raised $75 million in gross proceeds.

Each day, Fox attorneys provide their clients the razor-sharp focus of a boutique coupled with the robust resources of a national firm. They can do it all, making sure individuals and businesses — whether they be public or private, family-run or multinational — always receive the firm’s unwavering commitment to client satisfaction.

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