Providing strategic counsel in a highly sophisticated marketplace
Foley Hoag’s highly trained, respected, and experienced patent prosecution professionals can meet your legal needs at many levels. We believe that strategic counsel for developing and managing intellectual property is essential to your ability to succeed in an increasingly sophisticated and competitive marketplace. And our clients’ success is our ultimate goal.
Our deep understanding of technology, complemented by proven knowledge in strategically applying legal principles, helps us provide comprehensive solutions to your complex matters.
The intelligence, quality, diversity, and service-orientation of our patent prosecution professionals has helped us attract and maintain a wide variety of clients, including start-ups, Fortune 500 companies, and academic institutions.
We can work with you to establish and implement strategy for both U.S. and international patent portfolio procurement and management. Our patent prosecution professionals, including our experienced support staff of docketing specialists, foreign filing agents, patent assistants, and paralegals, work to establish worldwide patent protection for many of today’s most innovative technologies. Working closely with our network of highly competent foreign patent lawyers, located throughout the world, we prepare and prosecute your patent applications globally, including international applications under the Patent Cooperation Treaty.
Foley Hoag patent prosecution professionals are also uniquely positioned to work in conjunction with our firm’s Intellectual Property Litigation Group and Business Department to offer you an array of integrated intellectual property portfolio services, including due diligence, opinions and intellectual property-related litigation.
Representative experience
- Retained by one of the world's largest pharmaceutical companies, Foley Hoag’s patent attorneys joined a team of in-house management-level scientific and business decision-makers on an IP due-diligence trip to eastern Europe. The team vetted the potential licensor's patent and trade-secret portfolios, and also considered potential associated regulatory and logistical issues.
- Retained by Harvard University and Massachusetts Institute of Technology, Foley Hoag’s patent practitioners have obtained worldwide patent protection for numerous pioneering inventions in organic chemistry and chemical engineering. For example, the firm has obtained for the institutions domestic and foreign patents protecting asymmetric transition-metal-catalyzed reductions; asymmetric transition-metal-catalyzed cycloadditions; and transition-metal-catalyzed carbon-heteroatom and carbon-carbon bond-forming reactions.
- Identified, on the eve of FDA approval of one of our client's biopharmaceuticals, a prior public use that would cause a court to invalidate the otherwise blocking patent claims. This enabled our client to negotiate a license under the patent on commercially reasonable terms.
- Evaluated, on behalf of a pharmaceutical client, patent issues with respect to another pharmaceutical company's anti-infective program (including candidate drugs and assays), to do so under obligations of confidentiality to the anti-infective program owner, and to provide a thumbs up or down recommendation.
- Represented Biogen Idec, Inc., Genzyme Corp., and Baxter Healthcare in a suit challenging the validity and enforceability of Columbia’s patent on compositions and methods used in producing proteins by recombinant DNA technology. Shortly before trial, we obtained a royalty-free covenant not to sue from Columbia.
- Defended Abiomed in a patent infringement and trade secret action involving the development of transcutaneous energy transmission devices for artificial hearts, including plaintiff’s ultimate dismissal of all patent infringement claims. After trial, the jury returned a verdict for Abiomed on all claims.
- Successfully defended Becton Dickinson in a patent infringement action involving DNA probes for detection of bacterial pathogens. The district court’s decision invalidating the patent was affirmed by the Federal Circuit. Enzo Biochem, Inc., v. Gen-Probe, Inc. et al., 424 F.3d 1276 (Fed. Cir. 2005).
- Won an eight-figure jury award for Bard, including lost profits, price erosion damages, and royalties. The decision was affirmed by the Federal Circuit. 2000 WL 915241 (Fed. Cir.).
- Represented QLT in complex patent and trade secret litigation arising out of a collaboration among QLT, Massachusetts Eye and Ear Infirmary, and Massachusetts General Hospital that led to the development of photodynamic therapeutic treatment for age-related macular degeneration. We obtained a district court order correcting inventorship to add QLT’s scientist to the patent, leading to a stipulated dismissal.
Due Dilligence & Opinions
Providing creative, comprehensive intellectual property counseling
In an increasingly complex marketplace, Foley Hoag’s Intellectual Property Group offers a unique approach to providing comprehensive and thorough due diligence and opinion counseling to our clients. By combining the firm’s intellectual property litigation and patent prosecution professionals with the firm’s corporate lawyers, we are able to provide clients a unique combination of sophisticated scientific expertise with specialized legal training; offering our clients creative solutions to intellectual property evaluation scenarios.
We help companies, financial institutions and venture capitalists in evaluating intellectual property through a variety of services, including:
- Patent portfolio audits
- Clearance studies
- Patent landscape analyses
Our intellectual property opinion capabilities provide our clients with the freedom to operate, and our patentability and infringement opinions render the best position for our clients, either offensively or defensively.
Whether you are considering a merger or acquisition, looking to raise financing, or contemplating intellectual property litigation, our highly trained professionals can help you achieve your business goals by guiding you through the constellation of legal and technical issues you will encounter.
