Dr. Rolando Medina has extensive experience in intellectual property, including patent prosecution, opinions, due diligence studies, IP counseling, and licensing in biotechnology and the medical sciences. Rolando has experience representing academic universities and start-up companies, as well as mid-sized and large biotechnology and pharmaceutical companies.
Rolando advises clients on a broad range of patent matters, including the preparation and prosecution of patent applications, portfolio management and counseling, with particular experience in novel genes, antibodies, gene therapy, vaccines, antisense, stem cells, pharmaceutical formulations, peptide and antibody display technologies, nanotechnology, biofuels and potential treatments, and diagnostic methods for various diseases.
Rolando has led hundreds of landscape and freedom-to-operate analyses; non-infringement and invalidity opinions; IP due diligence reviews in the context of mergers and acquisitions, venture capital financings, internal audits, and licensing. He also routinely provides advice to clients in AIA post-grant review proceedings, including inter partes review and post-grant review proceedings.
Prior to law school, Rolando was a Postdoctoral Fellow in the Laboratory of James M. Anderson at Yale University School of Medicine, researching occludin function in epithelial cell tight junctions. As a graduate student in the Laboratory of Catherine H. Berlot at Yale University School of Medicine, his research involved structure/function analysis of the interactions of heterotrimeric G protein subunit, Gqα, with phospholipase C.
- Who’s Who Legal’s list of top Life Sciences transactional attorneys
- Managing Intellectual Property “IP Star”
Patent Prosecution and Counseling
- Managed and counseled on complex patent portfolios related to products in clinical trials for mid-sized biotech company.
- Performed due diligence and negotiated and drafted complex license agreement on behalf of start-up public company.
- Created strategic patent portfolio for start-up biofuel company leading to successful financing round.
- Assisted mid-sized biotech company with license and transfer of technology for creation of joint venture.
- Assisted in obtaining patent term extension due to regulatory delay for mid-sized biotech company.
Patent Trial and Appeal Board and Appellate Proceedings
- Kashiv BioSciences, LLC v. Amgen Inc., PTAB: Counsel for Kashiv in IPR proceedings challenging patents relating to methods of protein refolding and purification.
- Guardant Health, Inc. v. Foundation Medicine, Inc., PTAB: Counsel for Foundation Medicine in IPR proceedings defending patents protecting innovative comprehensive genomic cancer assays using next generation sequencing.
- Foundation Medicine, Inc. v. Guardant Health, Inc., PTAB: Counsel for Foundation Medicine in IPR proceedings challenging patents directed to methods for detecting genetic mutations.
Publications and Presentations
- "Biologics and Biosimilars," moderator, Life Sciences Patent Network North America, April 2019.
- "Does the US Government Have Rights to Your IP Under Bayh-Dole?," moderator, Life Sciences Patent Network North America, April 2018.
- “The Noneffect of Myriad on Personalized Medicine,” co-author, IP Law360, July 2013.
Professional and Community Involvement
- Member of the Boston Bar Association
- Member of the Boston Patent Law Association
- Former co-chair and board member of the Massachusetts LGBTQ Bar Association
- Member of the BBA’s Diversity & Inclusion Section Steering Committee
Education & Credentials
University of Pittsburgh School of Law
JD, 2003, cum laude
PhD, 1999, Neuroscience
MPhil, 1996, Neuroscience
Westminster College of Salt Lake City
BS, 1993, magna cum laude, Biology and Chemistry
U.S. Patent & Trademark Office
The Biologics Price Competition and Innovation Act (“BPCIA”) created an abbreviated licensure pathway for biological products shown to be biosimilar to or interchangeable with an FDA-licensed biological reference product.
Managing IP recently recognized six Choate partners - Robert S. Frank Jr., Dr. William R. Haulbrook, Dr. Brenda Herschbach Jarrell, Dr. Charles Lyon, Eric J. Marandett, and Dr. Rolando Medina – in its 2021 guide of “IP Stars.”
In this episode of Choate’s Life Sciences Insights podcast series, Eric Marandett and Rolando Medina review Amgen v. Sanofi and discuss strategies for how to successfully describe, claim, and assert antibody patents in the evolving legal landscape.
Six partners – Robert S. Frank Jr., Dr. William R. Haulbrook, Dr. Brenda Herschbach Jarrell, Dr. Charles Lyon, Eric J. Marandett, and Dr. Rolando Medina– have been included in the Managing Intellectual Property Magazine global 2020 rankings of “IP Stars.”
Six Choate partners – Bob Frank, Dr. William Haulbrook, Dr. Charles Lyon, Dr. Brenda Herschbach Jarrell, Eric Marandett, and Dr. Rolando Medina – have been singled out by Managing Intellectual Property Magazine as Global “IP Stars” on the publication’s annual list of the world’s leading intellectual property attorneys.