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.

Representative Matters

• 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.

Education