Firm: Honigman LLP
Location: Kalamazoo - MI
650 Trade Centre Way Suite 200
Kalamazoo, MI 49002-0402
- Tel : 269.337.7700
- Fax : 269.337.7705
- Email : email@example.com
Dr. Jonathan O’Brien has more than 20 years of experience assisting domestic and multinational companies on global IP portfolio procurement and enforcement strategies. He offers a pragmatic business perspective and has successfully assisted clients with leveraging their IP portfolios by identifying improvements and solutions to minimize risks and maximize strengths while aligning the IP strategy with his clients’ business objectives. His representative clients include companies in a variety of industries, including life sciences (pharmaceutical, biotechnology, nutraceutical, and medical devices), consumer goods, food, telecommunication, industrial chemicals and materials.
Dr. O’Brien has written and prosecuted several hundred patents throughout the world. He has experience rendering legal opinions on patent validity and noninfringement, as well as helping to coordinate global opposition, reexamination, nullity, and infringement proceedings. Dr. O’Brien also has extensive experience with IP due diligence as part of mergers and acquisitions, public and private offerings, and collaborations. He has experience drafting and negotiating a variety of agreements, including patent licenses, co-development and commercialization, material transfer, clinical trial, cooperative research and development agreements (CRADA) amongst others.
Dr. O’Brien has a particularly strong acumen in the life science industry and has worked on number of FDA-approved drugs, including Celebrex®, Bextra®, Zyvox®, Incivek®, Kaledyco®, Orkambi®, Pimodivir®, Fampyra®, Velcade®, Ninlaro®, Adcetris®, Linzess®, Cabozantinib®, Cobimetinib®, and Alunbrig®. He is currently assisting his clients with the development of nearly a dozen late stage pharmaceutical and biotechnology clinical candidates, such as mavacamten, TAK-788, and elascetrant, as potential therapies among a broad range of therapeutic areas, including oncology, cardiology, gastrointestinal and infectious diseases.
- Drafted and prosecuted patents in a variety of technical areas such as pharmaceutical, inorganic, and polymer chemistries; biotechnology; material science; physics; nanotechnology; and mechanical engineering
- Represented a multinational pharmaceutical company in developing a global patent strategy for a Phase III drug candidate, which involved obtaining patent issuances on the drug substance and implementing a life-cycle management plan
- Assisted a multinational pharmaceutical company and its European counsel in defending the company’s European patent during opposition proceedings
- Drafted and negotiated a variety of agreements, including patent license, co-development and commercialization, material transfer, and nondisclosure agreements, as well as clinical trial agreements, including CRADAs
- Conducted intellectual property due diligence for venture fund clients regarding potential investments, large pharmaceutical and biotechnology corporations regarding potential asset purchases and mergers, and startup companies regarding potential licensing of technologies owned by universities or third parties.
- Massachusetts Institute of Technology, Ph.D.
- Michigan State University College of Law, J.D.
- Hope College, B.S.
- U.S. Court of Appeals for the Federal Circuit
- Listed in Chambers USA: America’s Leading Lawyers for Business since 2017
- Recognized as a leading business lawyer in the Intellectual Property field in Michigan.
- The Best Lawyers in America, 2012-2021
- Recognized in practice area of Patent Law
- Michigan Super Lawyers, 2015-2020
- Recognized as a Rising Star, 2011 and 2013-2014
- LMG Life Sciences
- Patent Prosecution, Patent Strategy & Management Attorney of the Year – 2021 – Shortlisted nominee
- Patent Strategy & Management Attorney of the Year – Midwest, 2019 – Shortlisted nominee
- Recognized as a Life Sciences Star, 2017-2021
- IAM Patent 1000: The World’s Leading Patent Professionals, Recognized as one of the World’s Leading Patent Practitioners, 2014-2016, 2019-2021
- Managing Intellectual Property IP STARS, Recognized as a Patent Star, 2013-2021
- Leading Lawyers Magazine Michigan, 2017, 2021
- Recognized in practice areas of Intellectual Property Law and Patent Law
- Michigan Lawyers Weekly, Recognized as a Leader in the Law, 2014
Honigman’s Intellectual Property (IP) department focuses on patents, trademarks, copyrights, and trade secrets for client portfolios worldwide, including search, registration, enforcement, anti-counterfeiting, litigation, and a range of transactional work involving intellectual property rights (IPR).
Since 2018, our Intellectual Property department has been recognized as the highest ranking in the state of Michigan by Chambers USA: America’s Leading Lawyers for Business, and in 2021 our IP department was recognized for the first time in the state of Illinois. Chambers USA goes on to state that sources comment “they are an excellent firm and are highly skilled” and “have great expertise in IP matters.”
In 2020, Honigman’s IP department was awarded Managing IP‘s 2020 “United States – Firm to Watch,” a national award that recognizes remarkable achievements of IP practitioners and is a leading source of analysis on IP developments worldwide.
Our IP team offers a wide range of intellectual property services to large, mid-size, and small businesses throughout the nation and around the world. We also assist foreign clients in extending protection for IPR developed in their home countries to the U.S. market and assist U.S. clients in securing U.S. and global protection of IPR.
Our attorneys and IP specialists have extensive legal and professional training, including wide-ranging backgrounds and advanced degrees in electronics, computer science, electrical engineering, physics, e-commerce, information technology, chemistry, mechanical and chemical engineering, biotechnology, biology, medical devices, and structural and civil engineering. In addition, many of Honigman’s lawyers have worked for major corporations, national law firms, and IP boutiques and as examiners in the United States Patent and Trademark Office (USPTO), giving them valuable, multifaceted perspectives on our clients’ IP issues.