Joe Mahoney is an Intellectual Property partner in Mayer Brown's Chicago office. He concentrates his practice on IP litigation with an emphasis on pharmaceuticals, biotechnology, chemicals and medical devices. He co-leads the Firm’s Life Sciences Industry Group.
His training in pharmacy (Doctor of Pharmacy) gives him a unique understanding of scientific and technical issues, bolstering his extensive legal experience. His patent litigation and counseling practice includes representing clients in Hatch-Waxman Act and other patent litigation; post-grant proceedings at the Patent Trial and Appeal Board (PTAB); biosimilars; rendering opinions relating to the infringement, validity, and enforceability of patents; and negotiating and drafting patent licenses, co-marketing and joint venture agreements for a variety of products. He also has substantial experience in trademark, trade dress and trade secret litigation and counseling.
Joe has been recognized by Chambers USA (2008-14), Legal 500 (2008-14) and IAM Patent 1000 (2010-2014) as first-rate all the way, and a good strategist, who clients approve [for] his creative approach and sound reasoning. He has been recognized in IAM Life Sciences 250 - The World's Leading Life Sciences Patent Litigators 2010 as one who combines deep technical knowledge with patent litigation skills.
In addition, Joe leads IP due diligence assessments relating to acquisitions and mergers involving complex IP portfolios and pending litigation, including inventor and witness interviews; assesses title, encumbrances, extensions of FDA and patent exclusivities throughout the product lifecycle based on improvements, new formulations, new strengths or indications, improved pharmacokinetic profiles, dosage form dissolution profiles, or new salt, enantiomeric, or polymorphic forms; prepares timelines and scenario planning to align the business, clinical/regulatory, and patent objectives and likely outcomes; and provides strategic advice regarding Orange Book listings, patent term extensions, post-grant reviews, reissues, reexaminations, interferences, and oppositions.
Joe has argued before the Patent Trial and Appeal Board, and has conducted portfolio management and patent prosecution relating to a variety of pharmaceutical, medical device, chemical, and biotechnological inventions, including blood cell isolation, labeling and imaging, food enzymes, gastrointestinal drugs, DNA and peptide sequences, antibodies, chemotherapeutic agents, cancer diagnostics, nanoparticles, antimicrobials, vaccines, opioid analgesics, hormone therapy, antiemetics, antihypertensives, antidepressants, drug delivery systems (e.g., topical gels, transdermal patches, controlled and delayed-release oral dosage forms, inhalers, intranasal administration), immunoassays, needleless injectors, stents, and grafts (drug-coated and uncoated).
He joined Mayer Brown in 2001 after eight years with other law firms and three years as a pharmacist at Saint Louis University Medical Center.