- Syracuse University College of Law, J.D.
- University of Rhode Island, M.S., Microbiology
- University of Rhode Island, B.S., Microbiology
- U.S. District Court, District of Massachusetts
- U.S. Court of Appeals, Federal Circuit
- U.S. Patent and Trademark Office
David is recognized by IAM Patent 1000 as one of the world’s leading patent practitioners. In 2013, David was recognized as an “IP Star” by Managing Intellectual Property. Additionally, David was recognized as a “Life Sciences Star” by LMG Life Sciences in 2012.
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
- 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.
- 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.
- 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
- 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.
- People on the Move
Boston Business Journal | September 27, 2011
This coverage notes that patents practice co-leader and member of the firm’s life sciences practice David Resnick has been named a member of the Personalized Medicine Coalition’s Public Policy Committee.
- Federal Circuit Decides Human Genes Patentable
Massachusetts Lawyers Weekly | September 14, 2011
This feature article discusses the U.S. Court of Appeals ruling finding that human genes are patentable. Patents practice co-leader and member of the life sciences practice David Resnick provides third-party commentary.