Life After Cellect: Potential Pitfalls and Arguments to Navigate Through the Invalidity/Unpatentability/Loss of PTA Minefields

Mr. Irving has more than 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. Mr. Irving has served as lead counsel in many patent interferences.

Ms. Murphy focuses on developing patent filing and prosecution strategies tailored to clients’ worldwide business goals. She works with a wide range of clients, including small biotech startup companies, research foundations, and large publicly traded biotechnology and pharmaceutical companies. Ms. Murphy prepares new patent applications, prosecutes U.S. and foreign applications, and represents appellants in ex parte appeals before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). She has also led clients through numerous reissue applications, inter partes and ex parte reexamination applications, and supplemental examination proceedings. Ms. Murphy’s extensive client counseling practice includes providing patentability, freedom-to-operate, infringement, and validity opinions. In addition, she represents petitioners and patent owners in inter partes review (IPR) and post grant review (PGR) proceedings before the PTAB. She has substantial experience in a wide variety of life sciences technologies, including antibodies and antibody drug conjugates; antiretrovirals and anticancer agents; biologics; blood clotting factors; cell signaling and signal transduction; diagnostic markers and detection assays; drug formulations; gene delivery systems, including AAV; gene editing technologies, including CRISPR; immunooncology; lipid nanoparticles; microbiome analysis and probiotics; nucleic acid modifications; peptide synthesis and protein purification; single-cell and single-molecule analysis; small molecule drugs; and vaccines.

Ms. O’Brien has more than 25 years of experience representing both domestic and foreign clients of all sizes in the areas of patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of Ms. O’Brien’s technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products including new chemical entities and formulations, as well as novel solid forms including polymorphs, cocrystals, and amorphous forms of compounds. Ms. O’Brien’s expertise includes all aspects of preparing and prosecuting U.S. and foreign patent applications, such as patent drafting and prosecution, as well as more complex matters such as reissue and reexamination proceedings, appeals hearings, Post-Grant Reviews (PGR), and Inter Partes Reviews (IPR) before the Patent Trial and Appeal Board (PTAB). Her litigation expertise focuses on patent infringement cases including, for example, Hatch-Waxman litigation involving Abbreviated New Drug Applications, and includes all stages from pre-discovery through trial.

Ms. Zimmerman is a member of the Patent Group’s Life Sciences team. Her practice focuses on various aspects of patent prosecution, due diligence, and freedom to operate analysis, working primarily with clients in the life sciences, chemical, and food and beverage industries. Ms. Zimmerman has nearly a decade of experience in domestic and international patent prosecution. She also has significant experience providing strategic patent counseling to life sciences companies, universities, and research institutions, leveraging complex structures searches to guide them through key stages of drug development. In addition, Ms. Zimmerman has worked closely on several due diligence projects, which have successfully culminated in multi-million dollar license agreements. She regularly accepts pro bono patent cases from Georgia Pro Bono Assistance and Training for Entrepreneurs and New, Talented, Solo Inventors (PATENTS), and was named to the State Bar of Georgia’s 2021 Pro Bono Honor Roll. Ms. Zimmerman is a member of AUTM Eastern Region Planning Committee, where she assists in reviewing and selecting abstract submissions and in organizing the programming sessions for the organization’s regional meeting.