Asia Practice - Intellectual Property

Intangible Assets


Intellectual Property Practice in Chinese:  知 识 产 权

Overview

Blank Rome’s intellectual property lawyers provide legal services for life sciences companies to obtain and protect the intellectual property that is so critical to their very existence.  Blank Rome has earned a reputation as one of the country’s top law firms, particularly in areas that matters greatly to clients in the life sciences industry.  The National Law Journal rated Blank Rome as one of the top 10 patent litigation firms in the U.S.  Intellectual Property Today ranked the Firm among the top 40 trademark firms in the country. 

Our intellectual property attorneys have significant legal experience in areas such as:

  • patent litigation and licensing
  • patent applications
  • patent interference proceedings
  • patent reissues and reexaminations
  • infringement and validity opinions
  • trademark applications
  • trademark oppositions and cancellations
  • trademark and copyright litigation
  • customs enforcement of trademarks
  • foreign patents


Our Life Sciences Industry Team has particular experience with a variety of legal issues affecting brand name and generic drug companies including representation in patent counseling and opinions, licensing transactions, and Abbreviated New Drug Application (“ANDA”) litigation following a paragraph IV certification.  We understand the unique legal challenges associated with the fast-paced, highly competitive industry.  Blank Rome’s capabilities include the following:

experienced patent counseling, procurement, and management of patent portfolios

identification of potential targets for paragraph IV certifications, including analysis of Orange Book patent prosecution history and analysis of generic competition for near-term paragraph IV submissions

rendering of non-infringement, invalidity, and freedom-to-operate opinions with respect to the paragraph IV target selection as well as continued monitoring of generic competition and potential late-listed patents

significant trial and litigation experience in pharmaceutical and biotech patent cases in federal courts throughout the United States

IP Procurement

Patents

Blank Rome’s diverse team of patent attorneys are registered to practice before the U.S. Patent and Trademark Office (PTO) and hold bachelor’s and advanced degrees in chemical, mechanical, electrical, biomedical, environmental, and nuclear engineering, as well as physics and life sciences.  By education and experience, the firm’s attorneys are equipped to handle technologies in many fields, including emerging areas such as biotechnology, pharmaceuticals, semiconductors, electronics, software, and biomedical devices.  Blank Rome’s patent attorneys have successfully prepared and prosecuted thousands of U.S. patents over the years, and have assisted some of its clients in building sizable patent portfolios that resulted in significant revenues from licensing of their patented technology or by asserting their patent exclusivity in a particular market. 

Patent Applications.  Blank Rome represents clients in every phase of the patent application process—from initial consultations with the inventor and prior art searches, to drafting of the specification and claims, filing of the application, meeting with the patent examiner, responding to PTO actions and, if necessary, appealing such actions before the PTO’s Board of Patent Appeals and Interferences, the U.S. District Court for the District of Columbia, and the Court of Appeals for the Federal Circuit.

FAST FACTS

 

File between 300-350 patent applications each year.

 

Manage over 2,000 active patent applications for more than 650 clients.

Patent Reissues.  Blank Rome counsels and represents clients in connection with reissue proceedings conducted by the PTO to correct errors in the coverage of issued patents.

Patent Reexaminations.  Blank Rome provides counseling and representation—with respect to reexamination proceedings conducted by the PTO—to reconsider the patentability of the subject matter of issued patents in light of prior art not considered by the examiner during the original application process.

Infringement Studies and Validity Opinions.  Blank Rome conducts analyses to determine whether a given article or process may infringe the claims of a patent, and provides opinions regarding patent validity or the patentability of subject matter proposed for patenting.  The firm’s activities in this area include carrying out thorough searches for relevant prior art.

Patent Interference Proceedings.  Blank Rome counsels and represents many parties in patent interference proceedings conducted by the PTO to determine priority among pending applications or between pending applications and issued patents.

Domestic and Foreign Patent Prosecution.  Through an international network of associates, Blank Rome assists its clients in obtaining patents and dealing with infringement suits and declaratory judgment actions—both on the patent enforcement and defense sides—and other patent matters as they arise. 

Trademark

Trademark SearchesBlank Rome conducts extended trademark investigations of federal, state, and common law sources to determine the probable availability and registrability of proposed trademarks, analyzes the results, and provides written opinion letters for clients.

Trademark Applications.  Blank Rome has extensive experience in all aspects of trademark protection, from the initial trademark search to filing and prosecution of the application, dealing with office actions and, if necessary, appealing such actions before the PTO’s Trademark Trial and Appeal Board (TTAB), or the Court of Appeals for the Federal Circuit.

Management of Trademark Portfolios.  Blank Rome provides comprehensive counseling and maintenance services—with respect to the global trademark programs and portfolios of clients— including the preparation of company trademark manuals, trademark license agreements, and related distribution agreements and assignments, as well as securing recordation of assignments and other transactions affecting title with the PTO.  The firm also counsels clients with respect to navigating the laws related to the importation of gray market goods.

Contested Proceedings Before the TTAB.  Blank Rome provides counseling and representation in connection with TTAB contested proceedings for clients opposing or seeking cancellation of federal registration of trademarks, as well as in concurrent use proceedings, or in the defense of such proceedings.

Internet Domain Name Disputes.  Blank Rome handles federal court cases and arbitration proceedings involving internet domain names on behalf of clients seeking to prevent or terminate confusion, web traffic diversion, loss of good will, or dilution of trademarks that cybersquatting produces.

Foreign Trademark Prosecution, Litigation, and Licensing.  Blank Rome assists its clients in obtaining trademarks throughout the world, including in the European Community and the Pacific Rim, and in dealing with infringement suits and other trademark matters that arise in those countries.  

IP Litigation

Blank Rome’s intellectual property litigation practice is supported by more than 200 attorneys with years of trial experience handling a wide variety of civil, criminal, and administrative matters in state and federal courts across the United States, at both the trial and appellate levels.  Each member of our litigation practice has extensive experience in a team-based and client-focused approach to every matter.  Members of the Life Sciences Industry team have particular experience handling litigation regarding patent, trademark, copyright, product liability, contract disputes and employment, including:

Patent infringement litigation representing a medical device manufacturer enforcing its patent rights against a multinational company, which resulted in multimillion dollar settlement in favor of our client.

Defense counsel for major brand-name pharmaceutical company in all of its Pennsylvania-based lawsuits involving products liability claims relating to the manufacture and sale of multi-billion dollar prescription pain medication.

National manufacturer of clinical pharmaceuticals in defense of multi-million dollar breach-of-contract action in federal court.

Officers and directors of generic pharmaceutical company in parallel state shareholders' derivative lawsuit and federal securities class action lawsuit.

Antitrust counseling and litigation concerning marketing activities of drug manufacturers, settlements between brand and generic drug manufacturers, sham litigation claims related to patent evergreening, including representation before the FTC.

Complex Drug (ANDA) Litigation

The IP litigation team at Blank Rome has represented pharmaceutical companies in complex drug litigation providing creative and cost-effective solutions to offer successful results for pharmaceutical and biotech clients.  

Representative Clients

  • Glenmark Generics
  • Ascio Pharmaceuticals
  • Impax Laboratories, Inc.
  • Dr. Reddy’s Laboratories
  • Torrent Pharmaceuticals Ltd. (India)
  • Amneal Pharmaceuticals, LLC
  • Matrix Laboratories (India)

We have provided advice in connection with Hatch-Waxman litigation (including preparation of paragraph IV notice letters) for pharmaceutical and drug delivery companies, including Impax Labs., Matrix, Lupin, Alembic Ltd., Zydus, Emcure Pharmaceuticals, LifeCycle Pharma A/S, Heritage Pharmaceuticals, Cadila Pharmaceuticals, Ltd., Claris Lifesciences Ltd., and Inventia Healthcare Private Ltd.  We have also counseled several brand name companies, including Shire, Lundbeck A/S, Forest Laboratories, and Axcan Pharma Inc. in connection with the Hatch-Waxman Act (including performing infringement studies, preparing Orange Book listability opinions, and procuring patent term extensions due to delays in obtaining regulatory approval for a drug product).

Complex Licensing Transactions

We also counsel and facilitate life sciences companies grow through various technology transfer transactions that life sciences clients face every day, including:

  • patent and technology licenses, including for platform technologies and therapeutics;
  • joint technology development agreements and sponsored research agreements;
  • contract research and development agreements (CRADAs);
  • material transfer agreements (MTA);
  • clinical research agreements, including arrangements with clinical research organizations (CROs) and clinical manufacturing organizations (CMOs); and
  • manufacturing, supply and distribution agreements.

Through our affiliations with other professional organizations, we also provide economic and technical analysis to determine market viability of specific projects.