Patent Counseling and Prosecution

Strategic advice to protect and enhance patent portfolios

Clients in the life sciences, pharmaceutical, biotech and medical technology industries depend on Dechert’s experienced team for the full range of patent counseling needs. We are a stand-alone practice with top-tier clients who bring us their most important and complicated prosecution work.

We represent clients at all stages of their business lifecycle, from discovery through development, clinical testing and product launch. Recognizing the dual imperative of maximizing patent portfolio value and aggressively protecting patents worldwide, we strive to enhance our clients’ value and afford them the broadest protection.

Our strategic advice is informed by years of industry knowledge and experience as well as significant scientific and technical acumen. Many members of our practice hold a Ph.D. or other advanced degree in a life sciences discipline, such as organic and medicinal chemistry, molecular biology, immunology, and neuroscience. Many also have either postdoctoral or industrial research experience, enhancing collaboration with our clients’ scientists, executives and legal teams.

A track record for obtaining patent coverage beyond client expectations

Dechert’s patent counseling and prosecution team represents pre-public and discovery stage biotechnology pharmaceutical companies as well as established, publicly traded international pharmaceutical companies in worldwide patent portfolio development – from prosecution and counseling to due diligence, transactions, and infringement defense and avoidance. We routinely represent clients in patent disputes before the U.S. Patent and Trademark Office (USPTO). Our lawyers also have extensive experience and much success in developing strategies to protect second generation drugs and biologics.

Our patent counseling team has extensive “real-world” experience, drafting and prosecuting to issuance patent applications across the entire scope of pharmaceutical and biotech inventions. We also advise clients on the potential impact of new laws and proposed legislation on their IP portfolios and strategies.

Comprehensive services tailored to specific client needs

Our approach to patent counseling is to partner with our clients to achieve their strategic business goals. By combining high-level technical expertise and practical legal insight, we provide a full range of patent services, from proper documentation and disclosure of discoveries and inventions to patent procurement, licensing and enforcement.

We focus on building solid patent positions that deliver competitive advantage and value over time, whether the client is a pre-public discovery-stage company or a large publicly traded company.

Strategic advice to protect and enhance patent portfolios

Aldeyra Therapeutics on patent portfolio management and IP counseling to support their ocular drug candidate for the treatment of a variety of ocular disorders including macular degeneration, allergic conjunctivitis, uveitis, dry eye, and Sjogren-Larsson Syndrome. In addition to securing global patent protection for their drug candidate, clinical indications, and formulations, Dechert guided Aldeyra through IP investigations conducted by investors and potential partners.
AVEO Oncology on the patent strategy and IP diligence in its US$566 million definitive agreement with LG Chem to acquire AVEO for $15.00 per share. The combination of LG Chem’s Life Sciences division and AVEO is expected to create a global oncology organization with a robust portfolio of innovative products supported by full capabilities from discovery to clinical, biologics manufacturing and U.S. commercialization.
Bicycle Therapeutics, a clinical-stage biopharmaceutical company, in its up to US$1.7 billion strategic collaboration with Novartis to discover, develop and commercialized Bicycle® Radio-Conjugates for multiple oncology targets.
Brickell Biotech, a clinical-stage pharmaceutical company, on the IP diligence and negotiation of IP terms in its US$320 million acquisition of an autoimmune, inflammatory program from South Korean drug discovery company Voroni.
Forbion Capital Partners in its €105 million Series B financing in clinical-stage Swiss immune-oncology company Anaveon. The funding will advance Anaveon’s Phase I/II programs evaluating the safety, dosing and clinical activity in patients with solid tumors of its lead selective interleukin-2 (IL-2) program, ANV419.
Homology Medicines in the establishment of its US$180M joint venture with Oxford Biosciences, a UK-based gene therapy firm and contract development and manufacturing organization. The new entity will offer cell and gene therapy developers adeno-associated virus and lentiviral-based manufacturing and development services via Homology’s GMP manufacturing capabilities in Massachusetts.
Kymera Therapeutics in its up-to-US$2 billion multi-program, strategic collaboration with French pharmaceutical company Sanofi to develop and commercialize first-in-class protein degrader therapies targeting IRAK4 in patients with immune-inflammatory diseases. Dechert negotiated and drafted the very complex IP terms of the deal, including patent strategy and due diligence.
Merck KGaA in its due diligence and negotiation of patent terms for a US$230 million licensing agreement with Vertex Pharmaceuticals for the worldwide development and commercialization of four promising research and development programs that represent novel approaches to the treatment of cancer. As part of the agreement, Merck KGaA will license two clinical-stage programs targeting DNA damage and repair, along with two additional novel pre-clinical programs.
Nimbus Therapeutics on the patent strategy, implementation, and diligence in its US$125 million financing round. The funding supports ongoing Phase 2b clinical trials of NDI-034858 (allosteric TYK2 inhibitor) and initiation of Phase 3; ongoing Phase 1/2 clinical trials of NDI-101150 (HPK1 inhibitor); and advancement of multiple preclinical programs.
PureTech Health, a clinical-stage biopharmaceutical company, on IP-related aspects of its US$1 billion deal with Roche to advance its milk-derived exosome platform technology for the oral administration of antisense oligonucleotide platform.
Third Harmonic Bio, a clinical-stage company developing a first-in-class, ultra-selective oral KIT inhibitor for the treatment of severe allergy and inflammation, on its patent strategy and IP diligence to aid its US$185 million IPO.

Dechert’s patent counseling and prosecution team is exclusively focused on the life sciences industry, which is why many high-profile companies entrust us with their most critical small and large molecule patent development, protection and enforcement issues. Described as “diligent, comprehensive, collaborative, nimble, and resourceful” by clients, in 2022, The Legal 500 US recommended Dechert’s practice as a “highly-competitive player in the life sciences sector, regularly acting for pharmaceutical and biotechnology companies in a wide variety of matters, including patent portfolio development for pre-public and discovery stage clients, the management of international patent portfolios, multi-million dollar transactions, and disputes brought before the USPTO”. Routinely recommended for patent portfolio management by Chambers USA: Nationwide: Life Sciences, our team is also consistently recognized as having the World’s Leading Patent Professionals by Intellectual Asset Management’s IAM Patent 1000.

Selected Dechert Patent Counseling and Prosecution clients include: