Charles E. Lyon, DPhil

Practice Group Leader

t 617-248-4793   f 617-248-4000

"has a keen understanding of how to evaluate intellectual property"

IAM Patent 1000

Charles Lyon has led or been involved with hundreds of IP due diligences on behalf of investors, investment banks and potential acquirers or partners.  Dr. Lyon also routinely provides opinions regarding validity and infringement in the context of product clearances.  Dr. Lyon is particularly sought after for his efficiency and ability to clearly communicate those issues that are most likely to affect the risks and overall valuation of the underlying transaction or product.  While he practices mostly in the life sciences sector, Dr. Lyon’s research experience as a chemist means that he is also routinely called upon by clients in the chemical industry.

Dr. Lyon also develops IP strategies and prosecutes patents for his clients.  While he has represented clients across the life sciences he has specific expertise developing portfolios relating to diagnostic tests, medical imaging and drug delivery.  Dr. Lyon has also worked extensively in the areas of polymer chemistry and catalysis.

He graduated from Cambridge University with first class honors in Natural Sciences and was awarded the Cambridge University Unilever Prize for distinction in Physical Chemistry.  He completed his postgraduate and postdoctoral research in Chemistry at Oxford University and MIT.  Dr. Lyon grew up near Paris and is a native French speaker.

Dr. Lyon is co-chair of the Intellectual Property Group.  He has been named a "Boston Rising Star" by the National Law Journal, an "Up & Coming Lawyer" by Massachusetts Lawyers Weekly and is named a Massachusetts Super Lawyers Rising Star.  Dr. Lyon has been named a World’s Leading Patent Practitioner by IAM Patent 1000 and an “IP Star” by Managing Intellectual Property.

Practice Focus

IP Due Diligence:  performs IP due diligence in the context of venture capital/private equity financings, public offerings, PIPEs, mergers and acquisitions, partnership and license negotiations. 

Clearances & Opinions:  provides opinions regarding validity and infringement in the context of product clearances.

Patent Prosecution:  significant experience building and managing patent portfolios for clients across the life sciences and chemical industries.

Representative Engagements

  • Helped build strategic patent portfolio for prognostic cancer tests.  Ongoing representation after guiding portfolio through two successive acquisitions by market leaders including most recent acquisition valued at about $580 million.
  • Assisted multinational client navigate numerous patent landscapes and license arrangements involving immuno and molecular diagnostic products.
  • Ongoing representation of pharmaceutical client from start-up phase building patent portfolio around pre-clinical drug for diabetes.  Helped position company for acquisition with potential valuation of over $500 million.

Publications and Presentations

  • “How to Protect Your Proprietary Technology in the US,” speaker, Launch in US Alliance IP Protection Webinar, November 2013.
  • “Myriad Gene Patent Case May Still Ultimately End Up at Supreme Court, Despite Remand to Federal Circuit Following Prometheus Decision, Attorneys Say,” quoted, BioPharm Insight, April 2012.
  • “Searching for Patent Drafting Pointers in Prometheus,” author, IP Law360, March 2012.
  • "International Intellectual Property," speaker, Global Practice Series at Harvard Law School, March 2010.
  • “Rapid Formation of Non-Native Contacts During the Folding of HPr Revealed from Real-Time Photo-CIDNP NMR and Fluorescence Experiments,” first author, Journal of Molecular Biology, 2003.
  • “Probing the Exposure of Tyrosine and Tryptophan Residues in Partially Folded Proteins and Folding Intermediates by CIDNP Pulse-Labeling,” first author, Journal of the American Chemical Society, 2002.
  • “The Interaction of the Molecular Chaperone Alpha-Crystallin with Unfolding Alpha-lactalbumin: A Structural and Kinetic Spectroscopic Study,” co-author, Journal of Molecular Biology, 2002.
  • “Low Field CIDNP of Amino Acids and Proteins: Characterization of Transient Radicals and NMR Sensitivity Enhancement,” first author, Molecular Physics, 2002.
  • “Triple resonance solid state NMR experiments with reduced dimensionality evolution periods,” co-author, Journal of Magnetic Resonance, 2001.
  • “Improved Photo-CIDNP Techniques for Studying Protein Structure and Folding,” co-author, Journal of Biomolecular NMR, 2000.
  • “Two Dimensional 15N-1H photo-CIDNP as a Surface Probe of Native and Partially Structured Proteins,” first author, Journal of the American Chemical Society, 1999.

Professional and Community Involvement

Dr. Lyon was a peer reviewer for the Massachusetts Life Sciences Center Small Business Matching Grant Program.  Dr. Lyon is a member of the Boston Patent Law Association and the Boston Bar Association.  He is also a member of the Oxford and Cambridge Society of New England.

 

 

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