`

`Intellectual Property
`
`Procurement
`
`Buchanan offers a full—service IP Section, the cornerstone of which is
`
`the intellectual property procurement group. Whether you need a patent,
`
`trademark or copyright, Buchanan will ably assist you at every turn.
`
`Patents
`
`Buchanan boasts over 50 practitioners registered to practice before the United States Patent and
`Trademark Office. In 2014, we prosecuted over 2,100 applications and helped our clients obtain
`1,682 U.S. patents. Calling upon our network of foreign counterparts, we helped our clients
`prosecute over 550 foreign applications and obtain 342 patents in 2014.
`
`Application Dralting
`
`An invention’s value often turns on the quality of the patent embodying it. Because our team
`members are versed in life sciences, we can readily understand an inventor’s contribution to the
`art, and we work directly with inventors to capture and claim the full invention. We follow case
`law developments in the Life Sciences area and draft applications that satisfy current standards
`yet leave options open should shifts occur.
`
`Prosecution
`
`Buchanan’s lP Section prides itself on cross—training. Our patent prosecutors have litigation
`experience and realize that every word in a file history is carefully analyzed. As a result, our
`patent prosecutors draft accurate and efficient responses. Should an Examiner fail to appreciate
`a given invention based upon written responses, Buchanan frequently takes advantage of its
`location and conducts in-person interviews with Examiners. Buchanan’s flagship IP office is in
`Alexandria, Virginia, just blocks away from the Patent Office.
`
`Opinions
`
`Key business decisions rest upon analyses not only of your IP, but also that of your competitors.
`Whether the issue is validity/invalidity, infringement/non-infringement or both, we can help you
`determine whether to stay the course or modify your tentative plan so as to minimize risk.
`
`Diligence Investigations
`
`Whether you seek to acquire a patent portfolio or seek to transfer your patent portfolio, diligence
`investigations involve a detail-oriented process. From verifying that the “owner” truly owns the
`property to determining whether the risks in the transaction outweigh the potential rewards,
`Buchanan's Life Sciences Team can assist with every step.
`
`Licensing
`
`A key reason to have patents is to monetize them. We have experience with issues encountered
`in life sciences licensing transactions, including those associated with inter-institutional
`agreements, federal funding, cooperative research and development agreements, the Bayh-Dole
`Act, F/RAND and export control.
`
`

`

`Portfolio Management
`
`Obtaining a patent is just one hurdle along the life cycle of an invention. Buchanan’s Life
`Sciences Team will help you chart out how best to fully protect an invention, be it with one or
`many patents. Buchanan offers institutional knowledge of the invention from its inception, and
`we use that knowledge to assist you in deciding what assets to retain and enforce.
`
`Patent Term Adjustment
`
`Every day of patent term matters, especially in the life sciences world. Due to our familiarity
`with PTA-triggering events, our patent prosecutors work with you to maximize valuable term. In
`addition, Buchanan's team can verify PTA calculations performed by the PTO and can challenge
`erroneous calculations.
`
`Patent Term Extension
`
`Applying for PTE is a seemingly straight—forward task but one that brings with it important
`consequences. From helping to analyze which patent in the portfolio should be extended to
`shepherding the application through the regulatory channels, Buchanan can advise you at every
`turn.
`
`Biosimilars/Biologics
`
`The Biologics Price Competition and Innovation Act (BPCIA) became law almost five years ago,
`and the import of the Act is now emerging. Our team can help you navigate the biosimilars world
`—from pre—litigation considerations to discovery mechanisms to actual litigation.
`
`Trademarks and Copyrights
`
`Buchanan’s Trademark and Copyright Group includes attorneys and paralegals who handle all
`aspects of trademark and copyright matters, including investigation and clearance, registration
`and maintenance, opposition and cancellation proceedings at the Trademark and Trial and Appeal
`Board (TTAB), federal and state court litigation involving the protection and enforcement of
`trademarks and copyrights, and administrative litigation at the International Trade Commission
`(ITC). The firm has experience in remedies against trademark and service mark counterfeiting on
`the Internet. We also handle preparing and filing copyright applications and have experience in all
`aspects of copyright litigation, including notice and takedown demands and safe harbor defenses
`underthe Digital Millennium CopyrightAct.
`
`Product Naming
`
`Our trademark lawyers represent life sciences companies in selecting and obtaining approval of
`product names for prescription and over—the—counter drugs. We research, review and vet possible
`trademarks with our clients and guide them through each phase of the naming process.
`
`Counterfeit Products
`
`Because the value of a product can be undermined by harmful or ineffective counterfeits, our
`Trademark Group develops strategies to uncover and combat counterfeit goods in the markets.
`Buchanan’s trademark lawyers are prepared to work aggressively to obtain injunctions and
`seizure orders and to take other steps to minimize the harm to our clients a the public.
`
`

`

`Intellectual Property
`
`Enforcement
`
`Patents, trademarks and copyrights permit the holder to exclude others
`
`from encroaching upon the protected area. Buchanan’s Life Sciences Team
`
`helps patent, trademark and copyright holders decide whether their rights
`
`are being threatened and, if so, when and how to take action. Our team
`
`also helps alleged infringers determine whether the infringement allegations
`
`are well—founded and whether the underlying intellectual property is valid.
`
`We are sensitive to the invasive nature of litigation, as well as the costs
`
`associated with enforcement. Drawing upon the technical knowledge of
`
`our deep bench, we tailor each litigation team to your particular needs.
`
`Traditional Litigation
`Buchanans IP Litigation Group offers the resources and experience of a general practice firm
`but with the locus of an IP boutique. We handle patent, trademark, copyright, trade secret,
`unfair trade/competition, ITC and arbitration matters from the initial tribunal through the highest
`appellate court.
`
`Patent
`
`Patent litigation is complex, and the amount in controversy in the life sciences space is often
`very high. Our litigators roll up their sleeves and truly learn the technology, which enables them
`to develop efficient litigation strategies. We have handled many life sciences cases involving
`chemicals, pharmaceuticals, genetica||y—modified organisms and medical devices.
`
`Trademark
`
`Buchanan’s trademark litigators handle a wide range of trademark disputes, including all types
`of trademark infringement and dilution claims, counterfeiting, gray-market goods, domain name
`claims and licensing disputes. We also assist our life sciences clients in disputes before non-
`judicial forums, including ex parts and inter partes registration and cancellation disputes before
`the TTAB and anti—counterfeiting enforcement through the United States Customs & Border
`Protection Service.
`
`Copyright
`
`Our copyright litigators understand and work through key issues in copyright disputes, including
`originality, fair use, work-for-hire agreements and ownership, public domain, the Digital
`Millennium CopyrightAct, Orphan Works and database protection.
`
`Trade Secret
`
`Trade secrets can be among a life science company’s most valuable assets. In today’s
`competitive global marketplace, it is all too easy for a trade secret to be revealed, especially in
`light of the mobility within the life sciences sector. Our litigation team handles a broad spectrum
`of scientific, factual, legal and procedural issues in all state and federal courts, and we are
`prepared to proceed under all state and federal statutes and regulations, the Uniform Trade
`Secrets Act, the Federal Economic Espionage Act and state business tort laws.
`
`

`

`Unfair Trade and Unfair Competition
`
`Buchanan’s litigators are familiar with the substantial body of federal and state law directed to
`unfair trade practices and unfair competition, including laws that prohibit false advertising. False
`advertising can be especially harmful in the life sciences area. We develop creative strategies
`using the Lanham Act and other tools to protect our clients against unfair competition in various
`forms, including false product comparisons and scientific claims made without proper testing and
`verification.
`
`International Trade Commission
`
`The ITC provides a specialized, fast-paced venue for solving intellectual property disputes,
`including for life science companies. Whether you are a complainant or respondent, our litigators
`can assist with every step of the process from development of theories for domestic industry
`assertions to the full scope of invalidity attacks and defenses.
`
`Arbitration
`
`Because the courts are not the only, best or most cost-effective forum for many disputes, our
`IP litigators are experienced in domestic and international arbitration of patent, trademark and
`copyright disputes. Our team members use this experience to counsel clients on the advantages
`of arbitration in certain IP disputes.
`
`Hatch—Waxman (Paragraph IV) Litigation
`Ever since its adoption, members of Buchanan's Life Sciences Team have counseled companies
`with Paragraph IV litigation under the Hatch—Waxman Act. We staff our Paragraph IV teams
`in a manner that makes sense for the particular dispute. We endeavor to minimize invasive,
`expensive discovery that does not bear on the merits of the validity and infringement challenges.
`We work with our FDA and Antitrust groups to stay abreast of developments in these overlapping
`areas. Because members of our team are located in key Paragraph IV |ocations—DeIaware
`(Wilmington), New Jersey (Trenton and Newark), New York (New York City), and Virginia
`(Alexandria, home of the "Rocket Docket")—the expense of local counsel is obviated.
`
`Concurrent Proceedings
`
`Gone are the days of single patent, single proceeding litigation. Life sciences companies
`increasingly face concurrent proceedings on several assets, which can drain precious resources.
`Due to our teams familiarity with each type of concurrent proceeding, we can work with you
`to determine whether a multi-proceeding path is wise and can advise you on what to expect at
`each phase. For example, |PRs (detailed below) are now a complement to traditional Paragraph
`IV litigation. We counsel pharmaceutical companies about the pros and cons of using IPRs and
`on how best to navigate such proceedings. If you are faced with concurrent proceedings, we will
`quickly assemble a team to vigorously protect your assets.
`
`(continued)
`
`

`

`Intellectual Property Enforcement
`(continued from previous page)
`
`interferences
`
`Buchanan offers an interference team that has handled hundreds of interferences before what is
`
`now the Patent Trial and Appeal Board (the Board). While interferences are being phased-out due
`to the transition to first-inventor-to-file, many cases in the life sciences field remain vulnerable to
`interference practice. Our interference practitioners can work with you to position your portfolio
`so as to provoke an interference and then assist you with every step of the process. Should you
`unexpectedly find yourself in an interference, we can work with you to develop validity attacks on
`your opponent. Buchanan’s experience with all phases of interference practice and our familiarity
`with the Board removes what would otherwise be unknowns associated with an “arcane”
`
`practice.
`
`Inter Partes Reviews (|PRs)
`
`The America lnvents Act (AIA) brought about several new types of post-grant proceedings,
`including |PFls. |PRs are modeled closely after the motions phase of an interference, and
`Buchanan has effectively transitioned its interference experience to IPR practice. To date, we
`have assisted with over 35 |PFls, on behalf of both patent owners and petitioners. For petitioners,
`we help identify art, retain experts, formulate bases to efficiently attack the targeted claims,
`and draft persuasive petitions. For patent owners, we develop a coherent strategy to protect the
`patent, retain experts, decide whether to file a preliminary response and whether to amend, and
`draft persuasive responses. Our versatility in these proceedings allows us to craft and execute
`an appropriate strategy, anticipate our opponent’s next move, and create an appropriate record
`should the matter proceed to appeal.
`
`Post Grant Reviews (PGRs)
`Subject matter eligibility, written description and enablement issues are key concerns to our life
`sciences clients. While not appropriate for |PFls, which are limited to anticipation and obviousness
`attacks, these issues can be pursued using a PGR. Our team can help you determine if a PGR is
`the right way to challenge your competitor and can help defend you should your property face
`one of these new attacks. In time, a PGR will also become a possible alternative to traditional
`Paragraph IV litigation.
`
`Reissue and Reexamination
`
`Our patent reissues team has the in—depth knowledge our clients have come to expect,
`particularly when they are considering filing patent infringement litigation to enforce their
`intellectual property rights. Reissue proceedings are similar to standard patent prosecutions, but
`critical differences between the two can lead to a poor outcome if they are not handled correctly.
`Our experience in both broadening and narrowing reissue applications and in reissue protests
`provides our clients with full access to this sometimes critically valuable option. Many defendants
`and some plaintiffs in patent litigation are interested in reexamination requests, an option with
`both benefits and serious risks. We are ready to advise our clients about the complex strategic
`decisions presented by reexamination requests.
`
`For more r'nformafr'on, please visit us at B/PC.com
`
`

`

`