John P. Rearick, PhD

• Massachusetts Super Lawyers Rising Star

Patent Prosecution and Counseling

• Prepared and prosecuted a global portfolio covering covalent small molecule inhibitors in a crowded patent landscape, including obtaining claims to protein-inhibitor conjugates agnostic to inhibitor structure.
• Executed strategic series of patents filings, including dosing and impurity profiles, to extend exclusivity period for phase II drug candidate.
• Drafted and counseled small pharma company on patent filing strategy for small molecule series showing activity against multiple targets of clinical interest.
• Advised clients in European oppositions involving defending client patents and challenging third party patents.
• Counseled large chemical company in patent invalidation trial and appeal in Korea.
• Conducted extensive pre-ANDA litigation analysis of newly approved drug for large pharmaceutical company.
• Performed IP due diligence analyses and opinions in context of initial public offerings, on behalf of underwriters, and private companies.
• Represented Forma Therapeutics as IP counsel in $278M initial public offering.

Patent Trial and Appeal Board

• Valo Early Discovery, Inc. v. Hybrigenics SA., Fed. Circ.: Counsel for Valo Early Discovery, Inc. (f/k/a Integral Early Discovery, Inc.) in an appeal of a PTAB post-grant review decision involving a patent protecting novel inhibitors of ubiquitin-specific protease 7 (USP7).
• Progenics Pharmaceuticals, Inc. v. Max-Planck-Gesellschaft zur Förderung der Wissenschaften e. V., PTAB: Counsel for Progenics Pharmaceuticals, Inc. in a PGR proceeding challenging a patent directed to compounds for preparing ¹⁸F-radiolabeled Prostate-Specific Membrane Antigen (PSMA)-targeting conjugates.
• Hybrigenics SA v. FORMA Therapeutics, Inc., PTAB: Counsel for FORMA Therapeutics, Inc. in a PGR proceeding defending a patent protecting novel inhibitors of ubiquitin-specific protease 7 (USP7).
• Saudi Arabian Oil Co. v. SK Innovation Co. Ltd., PTAB: Counsel for Saudi Arabian Oil Co. in an IPR proceeding challenging a patent directed to polycarbonates.

• “Fully Exploiting Your Innovations: Best Practice in Innovation Harvesting,” panelist, Life Sciences Patent Network North America, May 2022.
• “Patent Strategies in Light of Clinical Trial Disclosures,” moderator, Life Sciences Patent Network Live, October 2021.

• “1L Boot Camp: OCI Interviewing,” panelist, Boston College, Newton Centre, April 2019.

• “Patents 101,” presenter, Harvard University, December 2018.

• “Translational Research in Biomaterials Seminar Series,” presenter, Boston University.
• “The Legal Profession: Explore Careers,” panelist, Harvard University.
• “Synthesis of Skeletally Diverse Small Molecules with Non-Natural Motifs: A Boronic Ester Annulation Strategy,” poster presentation, Broad Institute of Harvard and MIT Annual Meeting.
• “Synthesis of Skeletally Diverse Small Molecules with Non-Natural Motifs: A Boronic Ester Annulation Strategy,” speaker, HHMI Meeting of Predoctoral Fellows, Chevy Chase, MD.
• “Design and Synthesis of a Novel Series of 1,2-Disubstituted Cyclopentanes as Small, Potent Potentiators of 2-Amino-3-(3-hydrox-5-methyl-isoxazol-4-yl)propanoic Acid (AMPA) Receptors,” co-author, Journal of Medicinal Chemistry.
• “Asymmetric Synthesis of Umuravumbolide,” co-author, Organic Letters.

• Member of the PTAB Bar Association Diversity Committee
• Member of the Boston Patent Law Association
• Member of the Massachusetts LGBTQ Bar Association
• Executive Leadership Committee for Lawyers Have Heart annual road race benefiting the American Heart Association