In the life sciences and biotech industries intellectual property is often considered the most important asset. For pharmaceutical, medical device, manufacturing, bio-engineering and other science-based companies, valuation and revenues often depend on the status and strength of the IP portfolios that are used to exclude third party entrants.

Life Sciences Intellectual Property Services

We are mindful of the significant investments involved in the research and development of new chemical entities, large and small proteins, the methods of synthesizing/manufacturing chemical entities and proteins, and the methods/processes developed. By partnering with clients we help them optimize the market potential of their innovations and protect against third party challenges. Our comprehensive intellectual property services include business strategy, licensing, due diligence, patent prosecution and procurement, legal opinions, and litigation support. McGurk Group acts for a variety of clients in the life sciences and biotech fields, including large international companies, SMEs and individual inventors.

Our strengths include:

  • IP strategy development
  • IP audit and landscape analysis
  • Due diligence for mergers, acquisitions, and partnering
  • Drafting and negotiating license agreements
  • U.S. & International patent filings, including drafting, filing, and prosecuting services
  • Litigation support
Life Sciences - Microscope

Our Expertise in Life Sciences IP

Our experience covers a wide range of technical subject-matter including synthetic organic chemistry, inorganic chemistry, pharmaceuticals, general chemistry, agro-tech, small and large molecules, antibody technology, fused proteins, medical devices, and the development of therapeutics for treatments focused on autoimmune and inflammatory diseases.

Some of Our Work in Life Science IP

Bi-Specific Antibody Study

We conducted an expansive FTO review of the bi-specific antibody space for a small client seeking to be acquired by a high-profile organization in the same space. We screened thousands of results to help determine the client’s freedom to operate. Based on our analysis of the FTO study we confirmed the client’s ability to operate freely in this space, thereby making acquisition more appealing to a third party and the client’s asking price significantly higher.

Due Diligence: Medical Devices Company acquisition

A Japanese-based client in a multi-million dollar deal sought to acquire a U.S. based company that makes medical devices (“the Technology”). The due diligence of the target company and the Technology included a thorough review of the entire IP portfolio and related files. We met with and had numerous calls with the target’s IP counsel to review the IP and coverage for the related Technology that was being acquired. We also undertook a very careful review of all known third party IP. We worked closely with the target’s counsel to review each piece of third-party IP that the target or the client identified to successfully confirm the absence of any potential infringement issues.

One major issue, and potential deal breaker, that we addressed during the due diligence process involved a third-party technology used with the Technology. The third party had the right to cancel the contract with the target if the target was sold or otherwise acquired. We were able to work with the target’s counsel and with the client to arrive at a mutually beneficial approach to assure that the deal moved forward.

In addition to the above IP due diligence, we reviewed a significant number of contracts, including service providers, consultants, employees, NDA’s, other license agreements.

Nanoparticle Delivery Systems and Bi-Specific Antibodies

Drafting and filing applications directed to nanoparticle delivery composition systems involving bi-specific antibodies, where the nanoparticle contains both an antihistamine and a FcԑRI targeting moiety. The targeting moiety binds the nanoparticle to a target cell and blocks target cell degranulation mediated by FcԑRI receptor aggregation on the cell surface.

FTO Study: Neuro Degenerative Diseases (“NDD”)

Responsible for Freedom to Operate FTO study for client start-up focused on NDD. Identified and evaluated over 100 patents/applications to assess overlap with client’s IP portfolio. We identified two earlier filed patent families, with one entity based in Hong Kong and the other in Finland. Based on our review of these two families, we advised the client of the potential risks and possible negotiation strategies.

Pharmaceuticals, Viruses and Vaccines

We handled the integration, review, and prosecution of a large IP portfolio (400 + matters) acquired by our client. In addition to assisting the client with license negotiations, we undertook the detailed review of each file/portfolio, updating and managing the docket and any outstanding due dates, the integration of each matter into the company’s then existing portfolio, and extensive coordination with foreign counsel, including consolidation of same

Dry Powder Insulin: Due diligence of a Licensing or Acquisition Deal

We represented a large Japanese company concerning the due diligence of a licensing or acquisition deal involving dry powder insulin technology (hereafter “the Technology”) of a large U.S. based company. We reviewed an extensive patent portfolio covering the Technology, including composition of matter, methods of use/treatment, delivery technology and devices. We performed a comprehensive review of each patent and their related file histories and conducted extensive prior art searches of the Technology. In addition, we met with the target’s leadership team and key personnel. We also worked with regulatory counsel to ascertain the potential path forward for FDA approval. At each stage of our project, we kept the client informed about progress and the budget.