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Our Life Sciences team has published the Spring 2017 edition of its newsletter, Vector. Below you will find brief descriptions of the news and articles included in the publication. Read the full newsletter for more information.
DAVID CZARNECKI AND STANLEY CHALVIRE ELEVATED WITHIN THE FIRM
We are pleased to announce that David Czarnecki and Stanley Chalvire have been elevated to Member. Dave is exceptionally proficient in guiding both buyers and sellers through a wide range of corporate transactions. Stan is a Registered Patent Attorney, specializing in the licensing of intellectual property and related counseling.
AMANDA PHILLIPS NAMED 2017 UP & COMING LAWYER
Litigation associate Amanda Phillips has been named a 2017 Up & Coming Lawyer by Massachusetts Lawyers Weekly. The recognition is awarded to a select number of attorneys who have been practicing for fewer than 10 years but whose professional achievements are noteworthy and whose service to the community is also significant.
CORPORATE ATTORNEY MICHAEL JABBAWY JOINS FIRM AS PARTNER
Michael’s practice is focused primarily in the areas of emerging and growth technology companies, venture capital, M&A transactions, and corporate governance. As a member of the Corporate Department, Michael advises technology and other emerging companies through each stage of growth. Prior to joining MBBP, Michael was a member of the Technology Companies group at Goodwin Procter LLP.
RECENT LIFE SCIENCES TRANSACTIONS
MBBP represented several clients in life sciences transactions, including iSpecimen, Orionis Biosciences, First Light Biosciences, and Manus Biosynthesis. The transactions ranged from convertible debt to equity investments. Learn more on page 2.
FREEDOM TO OPERATE: PREVENTION IS THE BEST MEDICINE
Launching a new product or service can be fraught with uncertainty and involve large expenditures of limited resources. An FTO opinion can reduce uncertainty and provide some insurance against loss from an unfavorable finding of infringement of another’s patent. An FTO opinion makes a determination whether a product or service infringes issued patents. In other words, the opinion indicates whether or not there is “freedom to operate” the product or service within the patent landscape. Often, FTO opinions also identify patent applications that, if later issued as patents, may be problematic. Read the full article on page 2.
THE PATENT PROCESS: GET ON THE FAST TRACK
One of the biggest frustrations for patent applicants is the incredibly slow pace at which an application proceeds from filing to receipt of a substantive examination report to allowance. On average it takes 15.7 months for a patent application to receive even a first substantive examination report, though there is significant variability across technology areas. The Patent Office has recognized this problem and implemented several initiatives which attempt to address the problem from different angles. Two programs in particular have gained traction: the Patent Prosecution Highway (PPH) and Track One Prioritized Examination. Continue reading for more information about these programs.
OWNERSHIP OF ARISING INVENTIONS IN JOINT DEVELOPMENT AGREEMENTS
Collaboration remains a valuable means of fostering innovation and advancing scientific, clinical and commercial objectives. Towards that end, two or more parties contemplating a collaboration often consider entering into a Joint Development Agreement, where they define, among other things, their respective contributions and responsibilities towards their common objectives. These types of collaborations require a careful and thorough consideration of the disposition of intellectual property rights that may arise as a result of each party’s performance of its responsibilities under such collaborations. Read more starting on page 3.
FOR SKILLED IMMIGRATION TO THE U.S., THE TIMES, THEY MAY BE CHANGING
The last year of the Obama Administration saw an increased activism by President Obama in the area of skilled immigration. Through Executive Orders and regulations, the President made a number of important changes including providing Employment Authorization for spouses on H-4 visas, increasing the period of post-graduate employment authorization for foreign students in STEM fields (Science, Technology, Engineering and Mathematics), increasing the number of academic fields included in STEM and formalizing a grace period for foreign nationals on H-1B visas that find themselves between jobs. Read the full article beginning on page 5.
MBBP’s Life Sciences Vector, Summer 2016 07/14/2016Posted by Morse Barnes-Brown Pendleton in Client News, Life Sciences, MBBP news, New Resources.
Tags: Life Sciences, Life Sciences Newsletter, Newsletter, Vector
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At the second of our Life Sciences panel Series: “Laying the Foundation for Growth: Entity & Equity”, experts discussed whether a corporation or a limited liability company is the “Right Stuff ” for building an emerging company, and how to structure and optimize the equity compensation of the team. MBBP’s John Hession moderated the panel, which included Marc Cote of Accellient and Jeff Solomon of Katz Nannis + Solomon. Stay tuned for details on Panel 3 in the fall.
Click here to learn more.
MBBP ADDS TWO ATTORNEYS
Weatherly Ralph Emans, Corporate Senior Attorney – As a member of the firm’s PIFA team in the corporate group, Weatherly focuses her practice primarily on private investment funds, including private equity funds, venture funds, hedge funds and funds of funds. Weatherly’s practice also includes venture capital transactions and providing general corporate advice to early stage companies.
Amanda R. Phillips, Litigation Associate – As a member of the firm’s litigation practice, Amanda focuses her practice on commercial civil disputes and securities litigation, and has broad experience working with clients under investigation by federal and state government agencies.
WAIT A MINUTE MR. POSTMAN…
Sooner or later many companies with a successful product or service will receive an overture from a patent holder. Some are almost friendly, proposing a potential mutually beneficial business relationship involving the patent. Others are decidedly less so, leveling claims of patent infringement and seeking immediate termination of the activity or product sales and/or significant financial compensation. This entire range of written communications is commonly referred to as “demand letters.” So – what’s the next step if your company receives a demand letter?
Read more on Page 2.
SUPREME COURT DENIES SEQUENOM’ PETITION TO CLARIFY SCOPE OF MAYO IN SEQUENOM V. ARIOSA
On June 27, 2016, the United States Supreme Court denied a Petition for Writ of Certiorari filed by Sequenom, Inc. requesting the Supreme Court to clarify the scope of its Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) decision, as applied to Sequenom’s claimed inventions. The Mayo decision, which held that a method correlating a drug dosage regimen and levels of the drug in the blood was an unpatentable law of nature, has had the profound effect of narrowing the scope of patent-eligible subject matter in the United States and has cast doubt on the validity and enforceability of previously issued United States patents.
Read more on Page 3.
CLIENT SPOTLIGHT: iSpecimen
iSpecimen is a trusted, one-stop source of customized human biospecimen collections. Compliantly sourced from our diverse
partner network of hospitals, labs, biobanks, blood centers, and other healthcare organizations, our solid tissues, biofluids, and cells are delivered directly into the hands of biomedical researchers using our unique, turnkey technology. Scientists gain access to a ready supply of the high-quality, richly-annotated specimens they need from the patients they want. Supply partners gain an opportunity to further contribute to biomedical discovery as well as their bottom line.
Read more on Page 4.
MBBP’s Life Sciences Vector, Fall 2015 11/30/2015Posted by Morse Barnes-Brown Pendleton in Client News, Life Sciences, MBBP news, New Resources.
Tags: Life Sciences, Life Sciences Newsletter, Newsletter, Vector
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For many years, non-U.S. parties have taken advantage of the Hague System to register their design patents, an important part of strengthening and differentiating your product and brand. On May 13, 2015, the Hague Agreement Implementation of the Patent Law Treaties Implementation Act of 2012 (PLT) went into effect in the U.S. As a result, the U.S. became a member of the Hague System, an international system of registration for design patents (also referred to as “industrial designs” internationally). Now, U.S. applicants wishing to register a design patent in the U.S. and abroad may submit a single application and pay a single fee to register such design patent in all or some of the 63 other Contracting Parties that participate in the Hague Agreement.
Click here to learn more.
4,500 COMPANIES REELING AS EU’S HIGHEST COURT INVALIDATES SAFE HARBOR
On October 6, the Court of Justice of the European Union (“CJEU”) issued a binding judgment invalidating the European Commission Decision (Commission Decision 2000/520, the “Safe Harbor Decision”) that authorized the EU-U.S. Safe Harbor arrangement. For the past fifteen years, this arrangement has been relied upon by many businesses to transfer personal data from the European Union to the United States in compliance with the EU Data Protection Directive (Commission Decision 95/46, the “Directive”). As a result of the CJEU’s judgment, self-certification under the Safe Harbor framework is no longer sufficient to comply with the Directive.
CONTROLLING THE DEBATE: ANTICIPATORY SELF-DILIGENCE IN BIOTECH BUSINESS DEVELOPMENT
By: Jonathan P. Gertler, Back Bay Life Science Advisors
Business development is the lifeblood of the biotech industry. This article focuses on internal decision making regarding portfolio prioritization, and external anticipatory diligence to maintain optimal control over negotiation dynamics (i.e. “controlling the debate”).
MBBP ADDS TWO ASSOCIATES
Registered Patent Attorney Erin E. Bryan handles a broad range of intellectual property issues in a number of technical areas. She currently works with a variety of clients, including universities, research organizations and start-ups in the chemical, pharmaceutical and biotechnology areas. She is also proficient in patent prosecution and provides assistance with various phases of IP litigation and counseling.
Corporate Attorney Erik S. Thompson provides services to a range of clients, including emerging businesses and private investment funds, and advises them on mergers and acquisitions, issuances of ISOs and equity options, and regulatory compliance. He also serves as outside counsel to numerous companies, attending Board meetings and advising them on corporate actions.
MBBP ATTORNEYS PRESENT “CONSTRUCTING A SOLID PROVISIONAL PATENT”
In October, Registered Patent Attorneys Sean D. Detweiler and Dr. Stanley F. Chalvire spoke at a program hosted by TechSandBox for its Life Sciences SIG. Joining Sean and Stan were two Life Science CEOs. The panel provided attendees with guidance on how to do a provisional patent, on your own, or on a low budget.
RECENT FINANCINGS IN HEALTHCARE / LIFE SCIENCES
- NED Biosystems closed a $1.5 million Series B Preferred financing with First Round Capital and angel investors. NED Biosystems provides a adjunct therapy of natural supplements designed to enhance chemotherapy with less toxic side effects.
- Criscot Inc. closed an $800,000 extension of its Series A-2 Preferred Stock financing. Criscot provides a novel, proprietary applicator for delivery of drug compounds, resulting in more exact dosage without toxicity effects.
- First Light Biosciences Inc. closed a $3.0 million Series B Preferred Stock financing. First Light Biosciences provides a patented instrument for early and swift detection of pathogens during the hospital admissions process, reducing the risk of hospital-acquired infections.
SELVITA ESTABLISHES FIRST U.S. OPERATIONS IN GREATER BOSTON AREA
MBBP client, Selvita, recently announced an expansion into the Boston-area biotechnology and pharmaceutical market, as they open a fully-owned US subsidiary, Selvita Inc., headquartered in Cambridge, Massachusetts. Selvita is a leading global drug discovery company and the largest drug discovery company in Central and Eastern Europe. The new office, located at 485 Massachusetts Ave., will focus largely on expanding the company’s existing clients for its drug discovery services, as well as exploring and developing partnering opportunities.
HENKE-SASS, WOLF A SO-CALLED “HIDDEN CHAMPION”
Every day, people all over the world use products and solutions produced by Henke-Sass, Wolf – often without even realizing it, as most of our products have the brand and label of our customers and not ours. As a medium-sized international company, and a technological leader in the medical endoscopy sector, we are sometimes considered a “hidden champion” – but certainly not “hidden” from our longstanding business partners and loyal customers.