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Ronald I. Eisenstein



Ronald Eisenstein focuses his practice on advising biotechnology and pharmaceutical companies, research institutes, and universities on patent portfolio management, post-issuance strategies, dispute management and due diligence. He is also a member of the firm’s Life Sciences team.

What do you focus on?

I focus my practice on helping clients devise and execute strategies for managing their patent portfolios as well as navigate the changing patent landscape. I leverage my scientific background, extensive legal experience and business acumen to strategically counsel clients on upcoming legal and business trends. Key areas of concentration for me include: immune modulation including antibodies; gene therapy; cancer vaccines; angiogenesis modulation; personalized medicine, including diagnostics, proteomics, biomarkers, companion diagnostics and related systems; synthetic biology; small molecules; magnetic resonance imaging; and primate lentiviruses.

Patent Strategies

I’ve worked with many clients to develop and implement a wide variety of patent strategies including strategic patent procurement, portfolio development, competitive intelligence and analysis, licensing and enforcement of the patents. I also counsel clients on alternative dispute resolution tactics and manage such approaches, especially when the outcome aligns with a company’s business objectives.

Patent Prosecution

I focus on prosecution of biotechnology, medical and chemical cases and emphasize strategic management of my clients’ intellectual property portfolios.

Post-Issuance

I help clients understand, and effectively use post-issuance procedures such as oppositions, interferences and inter partes reviews-both offensively and defensively. In addition, I provide freedom-to-operate guidance to clients as well as due diligence for acquisitions and financing.

What do you see on the horizon?

The biotech patent world is in flux and will be for the foreseeable future. Traditional forms of protection  need to adapt to recent Supreme Court decisions and changes to the patent laws that permit third parties to more easily challenge issued patents. I continue to advise clients with respect to effective strategies for navigating these changes.

Representative Matters

  • Ongoing management of numerous patent portfolios on behalf of large research and medical institutes, as well as universities
  • European oppositions involving AAV vectors (A 11 3042 EPOO) and companion diagnostics (P 106 731 EPPC)
  • Represented client in a WIPO arbitration based in Switzerland involving U.S. patent and contract issues

Contact

Ronald I. Eisenstein

Partner

Boston

Phone: 617-345-6054


Fax: 866-947-1874

Georgetown University Law Center, J.D.

Cornell University, B.S.

Massachusetts

New York

District of Columbia

U.S. District Court, District of Massachusetts

U.S. Court of Appeals, Federal Circuit

U.S. Patent and Trademark Office

U.S. District Court, Eastern District of New York

U.S. District Court, Northern District of New York

U.S. District Court, Western District of New York

U.S. District Court, Southern District of New York

IAM Patent 1000—Ranked as one of the world’s leading patent practitioners (2012–2018)

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