DAVID S. RESNICK

David Resnick is the co-leader of the Patents practice group at Nixon Peabody. David’s practice is focused on patent prosecution and overall portfolio management, transactional matters, and associated client counseling. He has been entrusted with managing the patent portfolios of some of the leading U.S. research institutions and domestic and international corporations. David has extensive experience in the life sciences and is widely regarded as a thought leader in the areas of pharmacogenomics, proteomics, and disease biomarkers, and their application in the evolving field of personalized medicine.

David is extremely business-savvy and regularly counsels clients regarding strategic methods for extracting the maximum value from their IP assets.

He has represented some of the world’s most recognized life science corporations before the U.S. Patent and Trademark Office and regularly assists clients in evaluating their intellectual property portfolios, as well as the intellectual property held by competitors, potential acquisition targets, and/or partners. In connection with these activities, he has been involved with due diligence and freedom-to-operate analyses and has prepared infringement and validity opinions involving complex and cutting-edge technical areas.

Other Areas of Experience

• Biotechnology-related fields such as: molecular biology, genetics, biochemistry and immunology
• Pharmaceuticals, including oncology
• Diagnostics
• Stem cells/regenerative medicine
• Medical devices

David has extensive experience advising clients on strategic issues relating to intellectual property. He works with start-up and established companies, as well as major U.S. research institutions, to develop comprehensive patent strategies to ensure effective protection of their intellectual property.

He has written articles on patent prosecution practice, personalized medicine, and technology issues for Nature Biotechnology, The Journal of Biolaw & Business, Personalized Medicine, and other publications. He is also a member of the editorial board of Pharmaceutical Patent Analyst. David is frequent lecturer on IP issues and is also a regular contributor to the business and technology website www.xconomy.com.

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