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Ronald I. Eisenstein

Partner
Co-Leader, Patents
Boston
Phone: 617-345-1000
Fax: 866-947-1874
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RONALD I. EISENSTEIN

Ronald Eisenstein is the co-leader of the Patents Practice Group at Nixon Peabody. Mr. Eisenstein focuses his practice on life sciences and intellectual property counseling. He is also a member of the firm’s Life Sciences Steering Committee.

Mr. Eisenstein has extensive experience in prosecuting biotechnology, medical, and chemical cases, and counseling with respect to strategic management of the intellectual property portfolios. Mr. Eisenstein advises clients in developing and implementing patent strategies including strategic patent procurement, portfolio development, competitive intelligence and analysis, licensing and enforcement of the patents. He assists clients in understanding and effectively using post-issuance procedures such as oppositions and interferences both offensively and defensively. He has provided freedom-to-operate guidance to clients as well as due diligence for acquisitions and financing.

His work has involved the areas of personalized medicine including diagnostics, proteomics, biomarkers, companion diagnostics and related systems; cancer vaccines, immune modulation, stem cells, gene therapy, angiogenesis modulation, signal transduction and primate lentiviruses.

Mr. Eisenstein has been actively involved in patent litigation in federal district courts throughout the United States.

Recent Publications and Speaking Engagements

Mr. Eisenstein has lectured and written extensively on interferences, oppositions, stem cells, personalized medicine, and living with and successfully managing patent portfolios with respect to changing court precedents, PTO rules and regulations, and patent reform including:
  • “Understanding Patent Reform and Leading Patent Developments,” France Biotech—Paris, France, 2011;
  • “From Discovery To Therapy: What Every Researcher Should Know About Technology Transfer And Drug Development;” Symposium on Advanced Wound Care/Wound Healing Society - 24th Annual Symposium on Advanced Wound Care—Dallas, 2011;
  • “Personalized Medicine,” Personalized Medicine World Conference—Silicon Valley,  2011;
  • “Dealing with the Attack on The Patentability of Personalized Medicine and Diagnostic Patent,” Association of University Technology Managers (AUTM) Annual Meeting—New Orleans, 2010;
  • “What is Due Diligence Analysis?” 17th Annual Advanced Licensing Institute at Franklin Pierce Law Center—Concord, 2009;
  • “Global Patenting Issues: Interferences;” Association of University and Technology Managers (AUTM) Annual Meeting—San Diego, 2008;
  • “SMART Patenting: Dealing With Interferences and Oppositions in a Global Society,” and “Surviving Patent Reform;” New York Biotech Association’s (NYBA) Annual Meeting—New York, 2007;
  • “Ethical Oppositions,” BIO Annual Meeting—Chicago, 2006.

Thought Leadership/Alerts

Press

Media Clips

  • Attorneys, Tech Transfer Pros Offer Their Take on How to Address New Rules under AIA
    Technology Transfer Tactics | March 1, 2013

    Boston partner and Patents practice co-leader Ron Eisenstein discusses new key provisions of the America Invents Act (AIA).

  • Fallout from Court Decision to Have Long-Term Impact
    BioWorld Today | March 21, 2012

    This article focuses on the Supreme Court ruling determining that Prometheus Laboratories Inc.’s process claims were not patent eligible. Boston partner and co-leader of the firm’s Patents practice group Ron Eisenstein provides third-party commentary about what the ruling means for the biopharma industry and personalized medicine.

  • TTOs Often Walk a Fine Line When Negotiating Rights to Improvements
    Technology Transfer Tactics | January 1, 2012

    This feature story discusses how technology transfer offices (TTOs) can effectively deal with the rights to intellectual property improvements in license agreements. Boston partner and co-leader of the firm’s Patents practice Ron Eisenstein provides commentary in the piece.

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  • What TTOs Need to Know about Freedom-to-operate Analyses
    Technology Transfer Tactics | December 1, 2011

    Boston partner and co-leader of the firm’s Patents practice Ron Eisenstein provides commentary in this article abut what Technology Transfer Office (TTO) managers need to know about freedom to operate investigations.

  • Reform Review: IP lawyers say concerns run high among clients
    Boston Business Journal | September 30, 2011

    Featured within the publication’s special “IP Law” section, this article discusses the long awaited patent reform. Boston partner and co-leader of the patents practice Ron Eisenstein provides commentary.

  • Human Capital: People on the Move
    Boston Business Journal | March 16, 2011
    This news brief notes that Boston partner Ron Eisenstein has been named co-leader of the firm’s Patents practice.
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Ronald I. Eisenstein