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DAVID S. RESNICK

David Resnick is the team leader of the Patent group and he works with start-up and established companies, as well as major U.S. research institutions, to develop comprehensive patent strategies to protect their intellectual property.

What do you focus on?

My practice is focused on strategic portfolio management, patent prosecution, transactional matters and associated client counseling. I manage the patent portfolios of some of the leading U.S. research institutions and domestic and international corporations. I also represent some of the world’s most recognized life sciences corporations before the U.S. Patent and Trademark Office. I have extensive experience in the life sciences and have particular experience in the areas of pharmacogenomics, proteomics and disease biomarkers and their application in the evolving field of personalized medicine.

I’ve written articles on patent prosecution practice, personalized medicine and technology issues for Nature Biotechnology, The Journal of Biolaw & Business, Personalized Medicine and other publications. I’m also a member of the editorial board of Pharmaceutical Patent Analyst.

Strategic portfolio management

I regularly assist clients in building and evaluating their intellectual property portfolios as well as in evaluating the intellectual property held by competitors. I regularly conduct freedom-to-operate analyses and prepare infringement and validity opinions involving complex and cutting-edge technologies.

Patent prosecution

I assist clients with patent prosecution in the areas of:

  • Molecular biology, genetics, biochemistry and immunology
  • Pharmaceuticals, including oncology
  • Diagnostics
  • Stem cells/regenerative medicine
  • Medical devices
  • Microfluidic devices

Transactions and related counseling

I work closely with my clients to identify and analyze acquisition targets and regularly conduct due diligence related to potential acquisitions.

What do you see on the horizon?

In the aftermath of the Prometheus decision, and until such time as further judicial decisions provide greater clarity, I foresee that many life sciences companies will continue to struggle with respect to what qualifies as patent-eligible subject matter.

Representative Matters

  • Led due diligence on intellectual property matters in connection with a significant investment by a U.S. VC in an international diagnostic/personalized medicine company.
  • Provide a broad range of patent services (including patent portfolio management) to a large institute involved in regenerative medicine (stem cells); assist the institute in devising and executing strategies that will extract the greatest value from their IP and also assist them in maneuvering around other people’s patents.
  • Helped develop a patent portfolio for an institute of a large research university that is conducting high-stakes research focused on engineering materials and devices with applications in medicine, energy, manufacturing, and the environment; work closely with the client’s inventors on protecting break-through technologies.

Recent Publications

  • Co-author of a stem cell book chapter in The Delivery of Regenerative Medicines and Their Impact on Healthcare
  • “Global Protection of Personalized Medicine Innovation” (D.S. Resnick and L.H. Karttunen Contarino), submitted for publication, 2011
  • “U.S. PTO Restriction Practice: Personalized medicine claims with SNPs” (D.S. Resnick, L.H. Karttunen Contarino), June 13, 2011
  • “Protecting personalized medicine innovation in China and India: Are diagnostic methods patentable?” (D.S. Resnick, L.H. Karttunen Contarino), May 17, 2011
  • “The Federal Circuit reaffirms separate written description and enablement requirements under the patent statute” (D.S. Resnick, R.I. Eisenstein, and M. FitzGerald), March 23, 2010

Recent Speaking Engagements

  • “Patent Eligibility of Biomarkers and Diagnostic Methods,” Policy Committee Meeting, Personalized Medicine Coalition (PMC), Washington, DC, December 6, 2011
  • “Analyzing and Resolving the Difficulties of Claiming Joint Infringement After Akamai and McKesson,” Practical Strategies for Prosecuting and Litigating Biotech Patents in a Rapidly Shifting Legal Environment, 13th Advanced Forum on Biotech Patents, Boston, MA, December 1, 2011
  • Update on U.S. case law and the new Patent Act, 2011 CIPA Life Sciences Conference, The Chartered Institute of Patent Attorneys (CIPA), Warwickshire, United Kingdom, November 17–18, 2011
  • “Overview of IP Due Diligence—The Basics,” “Industry-Specific Due Diligence Issues: Life Sciences Industry, Patents Dominant IP,” and “Valuation Issues,” Conducting IP Due Diligence and Ascertaining IP Value, Boston, MA, October 28, 2011

Media Clips

  • Myriad Decision Aftershocks Ripple through Biotech
    Nature Biotechnology | August 8, 2013

    Co-leader of the Patents practice and Life Sciences partner David Resnick discusses the impact of the June 2013 U.S. Supreme Court decision in the Myriad Genetics case.

  • SCOTUS: Human Genes Can't Be Patented
    CNBC | June 13, 2013

    Co-leader of the firm’s Patents practice and member of the Life Sciences team David Resnick discusses the U.S. Supreme Court’s ruling that human genes cannot be patented, striking down Myriad Genetics Inc.'s patents on isolated DNA associated with an increased risk of breast cancer.

  • Personalized Medicine Could Hinge on Supreme Court Ruling
    BioWorld Today | December 8, 2011

    This story notes that the future of personalized medicine rests in the hands of the U.S. Supreme Court as it mulls arguments in Mayo Collaborative Services v. Prometheus Laboratories Inc. Patents practice co-leader and member of the firm’s Life Sciences practice David Resnick provides third-party commentary.

Ideas

Personalized medicine patent watch
Intellectual Property Alert | May 20, 2014

Personalized medicine patent watch
Intellectual Property Law Alert | February 27, 2014

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Personalized Medicine Patent Watch - June 2013
Intellectual Property Alert | June 12, 2013

Personalized Medicine Patent Watch
Intellectual Property Alert | October 31, 2012

The developing legacy of Prometheus: new interim guidelines for patent eligible subject matter
Intellectual Property Alert | July 16, 2012

Personalized Medicine Patent Watch Update
Intellectual Property Alert | July 9, 2012

Webinar Recording: Surviving Mayo v. Prometheus
Originally recorded April 10, 2012 | April 11, 2012

‘First-to-File' is a year away, but planning should start today
Intellectual Property Alert | March 14, 2012

Crafting personalized medicine IP protection—walking the thin line between patent eligibility and enforcement
Intellectual Property Alert | January 10, 2012

USPTO announces: fast-track patent processing available after the filing of an RCE
Intellectual Property Alert | December 21, 2011

First true induced pluripotent stem cell (iPSC) patent issued by the USPTO
Intellectual Property Alert | November 2, 2011

. . . Hide Thought Leadership. . .

Events

NEW DATE: Surviving Myriad
June 20, 2013 | Boston, MA

Implementing the AIA
September 14, 2012 | Boston, MA

Webinar: Surviving Mayo v. Prometheus
April 10, 2012

. . . Hide Events . . .
David S. Resnick,Diagnostic Methods,Patents Dominant IP,Patent Portfolio Management,Stem Cells,Patent Prosecution,Patent Law,Comprehensive Patent Strategies,Pharmacogenomics,Proteomics,Personalized Medicine,Disease Biomarkers