Brenda Herschbach Jarrell, PhD

Practice Group Leader - Life Sciences & Intellectual Property

Dr. Jarrell is described by clients as an IP lawyer with keen business savvy. Her extensive technical credentials make her well versed in a wide variety of technologies in the biotech, pharmaceutical, and specialty chemical industries. Dr. Jarrell represents companies and institutions at all stages of the life sciences business lifecycle, as well as those who invest in them, guiding IP protection and competitive positioning strategies, negotiating strategic transactions, and providing creative solutions to IP and technology-related challenges.

Dr. Jarrell is a member of the Firm’s Executive Committee and is co-chair of the Life Sciences Group and the Intellectual Property Group. She was named “Attorney of the Year - Patent Strategy & Management - Massachusetts” by LMG Life Sciences in 2017 and 2016, an “Intellectual Property Trailblazer” by The National Law Journal and named the 2016 Boston “Lawyer of the Year” for Biotechnology Law by Best Lawyers and a “Top Woman of Law” by Massachusetts Lawyers Weekly. She was also ranked among the top 50 women Massachusetts Super Lawyers. Dr. Jarrell is listed by Chambers USA and Best Lawyers in America. She has been listed in The Legal 500, named a World’s Leading Patent Practitioner by IAM Patent 1000 and recognized by Managing Intellectual Property as an “IP Star” and among the “Top 250 Women in IP” nationwide. In 2017, Dr. Jarrell was named to Who's Who Legal's list of top Life Sciences transactional attorneys. She was also included in the Patent Expert Guide in 2015 and 2017, placing her among “the world’s leading practitioners” in patent law.

Practice Focus

Intellectual Property Protection:  helps clients design and manage complex patent portfolios in support of business goals and strategies. Coordinates patent strategy with regulatory strategy and business opportunities, including by assessing positioning relative to third party portfolios. Crafts strategies in with respect to both small and large molecule therapeutics, as well as cellular therapeutics and diagnostics. Particular expertise in fields relating to antibody therapeutics and formats, nucleic acid therapeutics, various small molecule therapeutics including covalent inhibitors, and vaccines. Also significant practice in metabolic engineering and specialty chemicals, particularly including “green technology” strategies for their production.

Complex Intellectual Property Disputes:  leads both prosecution and defense of contentious matters such as Inter Partes Reviews and Interferences within the United States Patent and Trademark Office. Assists in patent infringement cases within the life sciences and pharmaceutical industries.

Technology Transactions & Licensing:  negotiates and crafts strategic alliance, collaboration, and license agreements between and among life sciences and pharmaceutical clients.

Investment Counsel:  assists investors of all types in assessing technology and intellectual property assets and risks associated with potential target investments. Also represents target companies preparing for diligence review by investors and partners.

Representative Engagements

  • Has represented nucleic acid therapeutics company from start-up through IPO and into clinical trails, crafting an IP portfolio with layered protection of both platform technologies and key product candidates, including in support of major collaborations.
  • Works with start-up company to navigate a complex small molecule patent landscape and develop an exclusivity proposition attractive to large pharmaceutical partners.
  • Leads team representing a major diagnostics company in Inter Partes Review proceedings at the United States Patent and Trademark Office.
  • Develops life-cycle management strategies for various clients, large and small, to protect assets whose base composition of matter protection may be expiring before products can be commercialized.
  • Represents various clients developing biologic therapeutics (both antibody-based and cellular), with particular focus on counseling with respect to freedom to operate while also securing strong protection, worldwide, for assets, including those whose major uses are likely to be in combination and/or in specialized patient populations.
  • Helps coordinate worldwide protection and dispute strategy on behalf of client with ongoing matters, both offensive and defensive, in multiple jurisdictions.
  • Assists venture capital group in assessing intellectual property landscape relating to a novel strategy for tackling complex disorders, including negotiating option and license agreements, and partnerships with research laboratories around the world.

Publications and Presentations

  • “Double Patenting and Divisional Practice After Gilead,” moderator, BIO IPCC Fall Conference, November 2017.
  • “Quality of a Target’s IP Position,” speaker, CBI M&A Conference, October 2016.
  • “A Year in Review: Key Cases in 2015 and 2016 Outlook,” moderator, Consero 2015 IP Forum for Pharmaceuticals and Biotechnology, December 2015.
  • "Patents and Drug Discovery: Do They Help or Hurt?", speaker, Harvard University, October 2015.
  • "Research, Innovation, and Successful Commercialization," speaker, Dartmouth Ventures 2015 Conference, April 2015.
  • "Patents and Drug Discovery: Do They Help of Hurt?," speaker, Harvard University, February 2015.
  • "Female Powerbrokers Q&A: Choate's Brenda Jarrell," featured, IP Law360, January 2014.
  • “Patents 101,” presenter, Harvard Business School, Boston, November 2013.
  • "Does Myriad Matter?" moderator, BIO IP Counsels Committee Fall Conference and Meeting, November 2013.
  • “The Noneffect of Myriad on Personalized Medicine,” co-author, IP Law360, July 2013.
  • “Formulating a Biosimilars Patent Strategy Following the Implementation of the FDA’s Approval Pathway,” speaker, American Conference Institute’s Advanced Forum on Biotech Patents, Boston, November 2012.
  • “Will Prometheus & Myriad change the world? What do they really mean for the Biotechnology Industry?” moderator, BIO IP Counsels Committee Fall Conference and Meeting, Charleston, SC, November 2012.
  • “Innovation Spotlight: All About Biomarkers,” speaker, Memorial Sloan-Kettering Cancer Center, New York, November 2012.
  • “Sequenom: Breadth of ‘540 Patent Creates Vulnerability to Validity Challenge Despite Strength of Claims – Attorneys,” quoted, BioPharm Insight, February 2012.
  • “Patent on Genetic Data Raise Legal Questions on Rights to DNA,” quoted, Bloomberg, February 2012.

Professional and Community Involvement

Dr. Jarrell currently sits on the Board of Advisors of the American Repertory Theater and is an Area I Coordinator for the North American Junior and Young Rider Championships, United States Eventing Association.



Education & Credentials

Harvard Law School
JD, 1998, cum laude
University of California at San Francisco
PhD, 1993, Biochemistry and Molecular Biology
Harvard University
MA, 1988, Chemistry, magna cum laude
Harvard University
AB, 1988, Chemistry, magna cum laude

Admissions

Massachusetts

U.S. Patent & Trademark Office

U.S. Court of Appeals, First Circuit

Brenda's Insights