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    1. Home
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    3. David S. ResnickPeople
    1. Home
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    3. David S. ResnickPeople

    David S. Resnick

    Senior Counsel


    • Boston
    • Office617.345.6057
    • dresnick@nixonpeabody.com
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    Introduction

    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.

    Practice Areas

    Intellectual PropertyLife SciencesIsraelNon-Compete & Trade Secrets

    Industries

    Higher EducationHealthcare

    My focus

    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.

    Representative experience

    • 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.

    Looking ahead

    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.

    Insights

    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

    Speaking Engagements

    • “The Entrepreneurial Hour with David Resnick,” Harvard Medical Postdoc Association (HMPA), March 16, 2023
    • “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

    In the news

    • Microbiome Times

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

      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.
      April 29, 2020
    • Boston Business Journal

      Microbiome biotechs grapple with how to protect their IP

      This story quotes Boston Intellectual Property partner David Resnick on best practices and challenges facing microbiome companies, which create novel disease-fighting treatments from naturally occurring substances, as they try to patent their innovations.
      Aug 8, 2019
    • NBC Boston & New England Cable News

      Wheelchair Superhero

      This media clip highlights the Wheelchair Man book launch party hosted at the Nixon Peabody Boston office and features pro bono client, Mohammed Sayed (AKA Wheelchair Man). Boston IP counseling & transactions partner David Resnick and public company transactions associate Tevia Pollard helped Mohammed create his new non-profit RimPower.

      Jan 27, 2017
    • Boston Globe

      ‘Wheelchair Man’ tells a real-life superhero story

      Boston Intellectual Property partner David Resnick is mentioned in this article as legal counsel to Mohammad Sayed, a young inventor from Afghanistan who is developing adaptive products and a comic book series to inspire people with disabilities and to raise awareness in cultures that keep disabled individuals hidden from view. Boston Public Company Transactions associate Tevia Pollard and Labor & Employment associate Matt Frankel work with David on this pro bono matter.
      Oct 7, 2016
    • Law360

      Marijuana Patent Applications Face Tough Road at USPTO

      Boston IP Counseling & Transactions partner David Resnick is quoted in this article discussing potential challenges facing those applying for new types of marijuana plant patents from the U.S. Patent and Trademark Office.



      Jan 8, 2015

    Admitted to practice

    Massachusetts
    U.S. District Court, District of Massachusetts
    U.S. Court of Appeals, Federal Circuit
    U.S. Patent and Trademark Office

    Education

    Syracuse University College of Law, J.D.
    University of Rhode Island, B.S., Microbiology
    University of Rhode Island, M.S., Microbiology

    Professional activities

    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.

    Recognition

    • Managing Intellectual Property—Recognized as an “IP Star” (2013-2021)
    • The Best Lawyers in America®—Recognized for Biotechnology & Life Sciences Practice and Patent Law (2015-2023)
    • 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)

    Insights And Happenings

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    • Event

      The Entrepreneurial Hour with David Resnick

      March 16, 2023
    • Press Release

      Nixon Peabody and its IP attorneys recognized as industry leaders by IAM Patent 1000

      July 26, 2022
    • Press Release

      Nixon Peabody attorneys named 2022 “IP Stars” by Managing Intellectual Property

      July 18, 2022
    View All

    Professionals in the Practice Area

    View All
    • Seth D. Levy

      Partner / Leader, Intellectual Property Practice / Co-chair, Life Sciences Practice
      • Los Angeles
      • Office:213.629.6161
      • slevy@nixonpeabody.com
      Seth D. Levy
    • Ravinderjit Braich, Ph.D.

      Partner
      • Boston
      • Office:617.345.1089
      • rbraich@nixonpeabody.com
      Ravinderjit Braich, Ph.D.
    • Jennette W. Psihoules

      Counsel
      • Washington DC
      • Office:202.585.8385
      • jpsihoules@nixonpeabody.com
      Jennette W. Psihoules
    • Janet M. Garetto

      Partner
      • Chicago
      • Office:312.425.8514
      • jgaretto@nixonpeabody.com
      Janet M. Garetto
    • Andrew Y. Choung

      Partner
      • Los Angeles
      • Office:213.629.6166
      • achoung@nixonpeabody.com
      Andrew  Y. Choung
    View All

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