Patent Prosecution & Portfolio Optimization
Gemini attorneys conduct strategic patent prosecution and portfolio optimization for companies at all stages of development, including start-ups, private equity portfolio companies, and companies seeking financing.
Patent Application Drafting & Prosecution Management
- Conduct prior art analyses and related diligence to identify subject matter for patent application filings
- Develop claims that protect clients’ inventions and offer broad protection against competitors
- Advise clients on the scope of data necessary to enable their inventions
- Counsel clients through all stages of patent prosecution, including filing applications, preparing Office Action responses, conducting examiner interviews, handling ex parte appeals and reexamination proceedings
- Have expertise in a wide range of technical fields, including small molecule drug design, formulation, solid form chemistry, methods of treatment, drug delivery, liposomal/nanoparticle technologies, bio-materials, biotechnology (antibodies, CAR-T, gene editing), polymeric materials, medical imaging, and medical devices
- Have significant experience working with the USPTO to manage patent prosecution
Strategic Development of Patent Portfolios
- Advise on optimal timing of patent applications to minimize the risk of prior art and maximize patent term
- Provide strategies for building robust patent estates (composition of matter, method of treatment, dosing, etc.)
- Advise on ex-U.S. patent filings to support clients’ international commercialization strategies
- Coordinate patent prosecution with foreign counsel in other jurisdictions to develop global patent portfolios
- Assess and align IP portfolios with business objectives to protect market advantage and enhance value
- Secure patent claims of nested and/or overlapping scope to build toolchest of “swords” and “shields”
- Perform diligence and analyze target entities’ patent portfolios for potential acquisitions, investments, and licenses
- Secure patent claims of varied scope to assert against competitors in infringement actions
- Manage patent prosecution efforts with co-pending or imminent litigation
Represent Life Science Companies in Transactions
- Mergers and acquisitions
- IPO
- Licensing, partnerships, and purchase of intellectual property
- Development and collaboration agreements
- Financing rounds (SEED, Series A, etc.)
Conduct Investor Diligence
- Freedom to operate analyses
- Invalidity opinions
- Patentability assessments
- Litigation risk assessments
Prepare IP Sections of Key Documents
- Licensing agreements
- Corporate disclosures of IP (e.g., 10-K)
- Transaction documents, including IPOs, mergers, acquisitions, financing, and asset purchase agreements
- Research collaborations and partnership agreements
- Ownership of IP in employee agreements
Conduct Manufacturing Diligence
- Assess IP risks in supply chain/manufacturing across international jurisdictions
- Advise in which ex-U.S. jurisdictions to file IP in view of supply chain/manufacturing and competitor threats