David S. Resnick

David Resnick works with startup and established life sciences companies, as well as major U.S. research institutions, to develop comprehensive patent strategies to protect their intellectual property.

What do you focus on?

My practice is focused on strategic portfolio management, patent prosecution, transactional matters and associated client counseling. I manage the patent portfolios of some of the leading U.S. research institutions and domestic and international corporations. I also represent some of the world’s most recognized life sciences corporations before the U.S. Patent and Trademark Office. I have an extensive background in the life sciences space and have particular experience in the areas of microbiome related technologies, pharmacogenomics, disease biomarkers, proteomics, tissue engineering, gene therapy, regenerative medicine, drug delivery systems, stem cells, angiogenesis modulation, cancer vaccines, oncology, immune modulation, medical devices, and diagnostics.

I’ve written articles on patent prosecution practice, personalized medicine and technology issues for Nature Biotechnology, The Journal of Biolaw & Business, Personalized Medicine and other publications. I’m also a member of the editorial board of Pharmaceutical Patent Analyst.

Strategic portfolio management

I regularly assist clients in building and evaluating their intellectual property portfolios as well as in evaluating the intellectual property held by competitors. I regularly conduct freedom-to-operate analyses and prepare infringement and validity opinions involving complex and cutting-edge technologies.

Patent prosecution

I assist clients with patent prosecution in the areas of:

  • Microbiome related technologies including probiotics and prebiotics
  • Molecular biology, genetics, biochemistry and immunology
  • Pharmaceuticals, including oncology
  • Diagnostics
  • Stem cells/regenerative medicine
  • Medical devices
  • Microfluidic devices

Transactions and related counseling

I work closely with my clients to identify and analyze acquisition targets and regularly conduct due diligence related to potential acquisitions.

What do you see on the horizon?

In the aftermath of the Prometheus decision, and until such time as further judicial decisions provide greater clarity, I foresee that many life sciences companies will continue to struggle with respect to what qualifies as patent-eligible subject matter.

Representative Matters

  • 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.

Recent Publications

  • 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

  • “2021 US Case Law Update,” CIPA Life Science Conference 2021, London, England, November 29, 2021
  • “IP Portfolio Strategy for Life Science Startups,” Harvard Innovation Labs Workshop, Webinar, July 20, 2020
  • “Intellectual property: understanding, navigating and obtaining freedom to operate in the current CRISPR-Cas 9 patent landscape,” Therapeutic Genome Editing congress, Boston, MA, March 21, 2019
  • “Decision Points in IP Strategy,” 2018 Life Sciences Summit, New York, NY, October 25, 2018
  • “Gut Check, Scoping Out Patents and the Microbiome,” 4th Annual Translation Microbiome Conference, Boston, MA, April 20, 2018
  • “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

Validity Attack on US Patent for Bifidobacetrium Combo-Therapy: What can we learn?

Microbiome Times | April 29, 2020

Boston Intellectual Property partners Mark FitzGerald and David Resnick co-authored this article analyzing a recent decision by the U.S. Patent Trial and Appeal Board to invalidate a University of Chicago U.S. microbiome patent. The authors note some positive aspects of that decision within the microbiome community, as it provides increased definition around what they can protect with patents.


David S. Resnick



Phone: 617-345-6057

Fax: 866-947-1613

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

  • Managing Intellectual Property—Recognized as an “IP Star” (2013-2021)
  • The Best Lawyers in America®—Recognized for Biotechnology & Life Sciences Practice and Patent Law (2015-2022)
  • IAM Patent 1000–Recognized as one of the world’s leading patent practitioners (2014-2021)
  • LMG Life Sciences—Recognized as a “Life Sciences Star” (2012-2018)

David is a member of the Association of University Technology Managers and the American Intellectual Property Law Association. David is also a member of the Personalized Medicine Coalition’s Public Policy Committee.

Back to top