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Intellectual property

The Norton Rose Fulbright Intellectual Property lawyers have represented life sciences industry clients for decades in a wide range of matters and in all aspects of IP. Together with our clients—which include educational, medical and research institutions, start-ups and large enterprises—we provide solutions to the often complex and high-exposure issues that arise within this sector.

Our life sciences IP team offers services across a significant range of disciplines and advises on all aspects of the protection, exploitation and use of intellectual property rights. Our US offices have extensive experience in the preparation and prosecution of patents, as well as related litigation, licensing, due diligence (including landscape and freedom-to-operate analysis), anti-counterfeiting, false advertising, trademark protection and policing, trade dress, trade secrets, and copyrights.

The majority of our lawyers—and the patent agents and scientific advisors who support them—have backgrounds and advanced degrees in scientific and engineering disciplines related to biochemistry, biomechanics, chemistry, genetics, information technology, immunology, microbiology, molecular/cellular biology, organic chemistry, pharmacology, physics, physiology and toxicology.

We offer a team of IP lawyers who are trained in a wide range of technologies with particular skill sets in the areas of:

  • medical devices
  • medical imaging
  • pharmaceuticals
  • therapeutics
  • biotechnology
  • chemistry
  • food sciences
  • agriculture

Since our lawyers have experience in both patent prosecution and litigation, we assist clients in crafting and implementing overall strategies for protecting and exploiting new technologies. In patent prosecution and transactions, our services include:

  • analyzing the patentability of new technology
  • filing and prosecuting U.S. and foreign patent and design applications
  • drafting and negotiating license agreements
  • executing technology transfer agreements
  • auditing and managing patent portfolios
  • performing due diligence and freedom to operate analyses
  • handling manufacturing research and development agreements
  • handling patent post grant proceedings

Protecting your brand

In addition to patent expertise, we offer a deep bench of lawyers and paralegals dedicated full time to trademarks and related issues. Our team vigorously represents clients and their trademarks and has extensive expertise in the enforcement of trademark rights against infringement, dilution and counterfeiting and related causes of action in US federal court litigation. From clearing of marks for use and registration to maintenance of existing registrations to policing and litigating both non-traditional marks (i.e., color, product configuration, sound, etc.) and traditional marks (i.e., words, slogans and designs), no US firm is more qualified to protect your marks than Norton Rose Fulbright’s US trademark practice group. Because our group has experience in all aspects of trademark practice, we can also assist you in crafting and implementing overall protection and enforcement strategies and in exploiting your valuable intellectual property assets.

Our recent work

  • Counseled, prepared, and prosecuted hundreds of domestic and foreign patent applications (with foreign associates) covering:
    • core technology for a gene therapy company;
    • pharmaceutics and other therapeutics, including vaccines, antibodies, small molecules, formulations, and plants for numerous companies and institutions;
    • medical devices and apparatuses for companies in a variety of commercial areas, including implants, stents, diagnostic machines, drug delivery, and hospital equipment;
    • several nonprofit medical research organizations, hospitals, and universities in a variety of technologies in the life sciences and chemistry areas;
    • personalized medicine for a number of different entities;
    • the food sciences area for a large petcare company.
  • Represented a global developer of medical technology and services in a breach of contract and patent litigation brought by a university. After the district court litigation commenced, we assisted our client in filing an inter partes review (IPR) proceeding challenging the validity of the patent. We were successful in the IPR  proceeding, and the patent held by the university was determined to be invalid.
  • Assisted with advising major US healthcare provider on trade secret issues concerning patient lists and payment schedules.
  • Advised global pharmaceutical company on issues concerning trade secret protection for potentially patentable subject matter.
  • Counseled Fortune 100 technology company on trade secret issues concerning MRI technology.
  • Preliminary and comprehensive trademark clearance and opinions for 100+ trademarks of major multi-national pharmaceutical company.
  • US and international clearance, prosecution, and policing of trademark for FDA-approved medical device used in bariatric surgery.
  • Handled freedom-to-operate assessments related to medical device technology.
  • Handled due diligence in support of M&A work, both on the buyer side and the seller side, related to medical device technology.
  • Lead counsel for large life sciences/pharmaceutical company in due diligence matters involving biotechnology or chemical compounds; this work also included freedom-to-operate analysis and patent opinions, as well as patent litigation analysis.
  • Counseled large hospital system regarding copyright ownership and permissions for educational training materials.