Contact: Catherine Polizzi
Morrison & Foerster has one of the most experienced and highly regarded patent practices in the legal field. The firm’s attorneys
have played a significant role in the creation and protection of many of the landmark patent portfolios in the information
technology and life science industries, working with clients such as the University of California, Stanford University, Novartis,
La Jolla Corp. and Targeted Genetics.
Morrison & Foerster offers clients a patent prosecution and counseling practice that is unrivaled in its depth of experience,
industry and technical expertise and international scale. The firm’s patent attorneys are particularly skilled in the strategic
planning of a patent portfolio, including writing successful patent applications in complex and novel situations, in anticipation
of possible future litigation.
Morrison & Foerster works closely with clients from the earliest stages of their technical development, offering valuable
advice about how to protect their inventions and ideas in view of business strategies. The firm is often called upon to advise
clients on complex licensing, patent clearance, and adversarial matters, as well as to provide strategic business counsel
regarding the development of products or technologies that may allegedly infringe patents held by competitors or require the
negotiation of royalty payments.
When necessary, the firm assembles experienced teams of patent attorneys, patent litigators and technical experts to address
unique business or intellectual property issues that may arise.
The firm’s patent practice includes two main technology sectors: life sciences and information technology. Within life sciences,
the firm’s attorneys have significant expertise in biotechnology and chemistry, with a particular emphasis on pharmaceuticals,
drug delivery and medical devices. Within information technology, the firm has particular expertise in software, Internet,
telecommunications, semiconductor, electronic storage media and digital signal processing technologies, as well as “business
method” patents. Given the depth and breadth of the firm’s experience, however, Morrison & Foerster is able to work with clients
seeking patent protection and counseling in virtually any field. For example, the firm has a growing practice in the field
of nanotechnology, representing clients primarily in the materials and bionano areas. Calling on attorneys with outstanding
expertise in the life sciences, materials, and chemistry areas, Morrison & Foerster is able to provide cutting-edge patent
prosecution and counseling advice to its clients in this complex and demanding new area of patent practice.
Representative Matters
University of California. The University of California has utilized Morrison & Foerster’s patent prosecution, IP counseling, patent interference and
litigation services for many years. Our work includes developing overall patent strategies for key UC patent portfolios. We
prepare and file patent applications for all of the UC campuses. We handle many areas of technology including but not limited
to chemistry, nanotechnology, medical devices, electronics and software, plant varieties, DNA vectors, new plant transformation
methods, methods of diagnosis and vaccines. For a key UC patent on bovine growth hormone, we prepared, and successfully prosecuted
the patent application to grant; we successfully handled an interference proceeding for the patent proving that UC inventors
were the first to invent the technology and we represented UC against Monsanto in a patent infringement suit on the patent
securing a $250 million dollar settlement on behalf of UC.
Genentech, Inc. Morrison & Foerster’s patent prosecution and counseling work for Genentech involves developing overall patent strategy, patent
application drafting, and prosecution. The technology area includes therapeutic biologics such as antibodies, drug targets,
production of biologics such as proteins, diagnostic methods and products, formulations, and animal models.
Novartis Vaccines & Diagnostics. Novartis has utilized Morrison & Foerster’s patent prosecution and counseling services for many years. Our work for Novartis
dates back to the early years of Chiron when Tom Ciotti and his colleagues wrote and prosecuted some of Chiron’s key patent
applications. Presently, our work involves developing overall patent strategy, patent application drafting and prosecution
and due diligence assessments in connection with license agreements, joint ventures and acquisitions. Working on behalf of
Novartis, we have developed strategies for the company’s cancer meningitis vaccine. Our work for Novartis also includes drafting
and prosecution patent applications that cover several pipeline drugs that are either currently in clinical trial or in the
pre-clinical development. We also represented Novartis on patent litigation matters and patent interference matters.
Caltech’s Fluorescence Based DNA Sequencing Portolio. We represented Caltech on their patents relating to fluorescence-based DNA sequencing. That technology enabled rapid DNA
sequencing which permitted the mapping of the human genome.
