IP Counseling

Overview

Choate represents life sciences and technology companies in managing the prosecution of global patent portfolios, developing patent life cycle management strategies, providing opinions concerning patent validity and infringement, and conducting patentability and freedom to operate diligence support and analysis. Our experience allows us to provide advice and perspective on the various roles that IP plays across a broad range of patent holders, from emerging companies to established multinational corporations and their investors – all to the benefit of our clients.

Our practitioners offer a unique combination of technical expertise and industry knowledge that positions us to work closely with clients to develop sophisticated patent strategies and to provide business-focused IP advice that will maximize their commercial success.

Choate prides itself on providing value-driven, relevant assessments when conducting intellectual property diligence for clients. Our cross-disciplinary approach provides coordinated counsel with respect to risk mitigation, value enhancement, negotiation strategies, and deal structures for our clients who are contemplating, or are targets of, investment or business transactions.

Our life sciences and technology practitioners are expert in IP law as well as a variety of technical areas and industries, which enables us to evaluate intellectual property assets adeptly and comprehensively.

Choate provides strategic global patent counseling for life sciences and technology companies across all sectors, with deep and significant experience in small and large molecule therapeutics, cell and gene therapies, diagnostics, nanotechnology, digital biotechnology, artificial intelligence, medical imaging and analytics, and robotics.

We are frequently retained to provide counsel relating to life cycle management, complex portfolio management, competitive surveillance, and creative patent portfolio development. Choate is also entrusted with coordinating intellectual property strategies associated with regulatory submissions, public filings and business partnership goals.

Choate offers a unique combination of technical expertise and industry knowledge that enables us to work closely with clients to provide sophisticated, business-focused advice on a variety of strategic transactions. We use our deep technical and IP experience to draft and negotiate complex collaboration and joint venture agreements, licensing agreements, and counsel clients on how best to leverage research and manufacturing collaborations to accelerate product development without comprising potential company growth. More broadly, we also work with our clients in a wide range of scientific and technical areas to assess complex technologies and determine how to structure transactions to support business goals and provide early structures for long-term success. Our cross-disciplinary approach consists of implementing end-to-end business and legal strategies, including strategic assessments and due diligence focused on risk mitigation and value enhancement.

Why Choate for IP Counseling?

Ip Counseling 5 Strategic And Acutely Business Focused Ip Counsel

Ip Counseling 1 45+ Team Members With Phds And Other Advanced Degrees

Ip Counseling 2 Experience In 20+ Scientific And Technical Areas

Ip Counseling 3 4,500+ Patents Granted Since 2020

Diligence

Represent Bain Capital Life Sciences in IP diligence assessments, including most recently: a $400M Series A financing of Kailera Therapeutics, a clinical-stage biopharmaceutical company developing a pipeline of next-generation therapies for the treatment of obesity and related conditions; a $200M Series C financing of ADARx, a clinical stage biotechnology company developing next generation nucleic acid therapeutics; and, a $130M Series A financing of Eyebiotech, a clinical-stage ophthalmology biotechnology company working to deliver a new generation of therapies for eye diseases.
Represent Venrock in IP diligence assessments, including most recently: a $120M Series B financing of Artiva Biotherapeutics, an oncology-focused biopharmaceutical company developing cell therapies based on primary allogeneic natural killer (NK) cells; a $108M Series C financing of RayzeBio, a privately held biotechnology company developing a pipeline of targeted radiopharmaceutical drugs for cancer; and, a $370M Series A financing of Candid Therapeutics, a privately held biotechnology company developing T-cell engager antibodies to treat autoimmune diseases.

Prosecution and Strategies

Lead IP counsel for companies developing and marketing small molecule therapeutics for treating diseases such as cancers, fibrotic disorders, neurological disorders, metabolic disorders, and complement-mediated disorders, with a particular focus on kinase inhibitors, including FDA-approved small molecule therapeutics and multiple clinical candidates, managing world-wide portfolios consisting of composition of matter, solid and crystalline forms, formulations, and dosing regimens, IP diligence in connection with financing and acquisition activities, advising on IP related disclosures in support of regulatory filings, SEC filings, and initial public offerings (IPOs).
Represent companies in assessing the strength of their IP portfolio relating to NDA-ready small molecule therapeutics, including advising on loss of exclusivity timelines, freedom-to-operate risks, ownership, and assessment of patentability in preparation for launch.
Lead IP counsel for several companies in the field of gene therapy, including development of patent portfolios, advising on R&D plans in response to changes in the IP landscape and IP related disclosures to the SEC, and performing IP diligence for acquisitions and in-licenses.
Represent several companies in the field of gene editing, including CRISPR editing, epigenetic editing and rewriting technologies in patent protection, IP diligence and landscape analysis for a variety of platforms, targets and therapeutic uses, including ex vivo and in vivo applications.
Serve as lead IP counsel for nucleic acid therapeutic companies across multiple modalities including RNA editing, splicing, and RNAi and antisense silencing, where we help clients develop IP strategies and build IP portfolios to protect their key platform technologies to position them in the market, and to protect and extend exclusivity for their clinical candidates and future products. We are also routinely handle IP diligence, financing and regulatory filings, and assist with strategic transactions including licensing, manufacturing and supply agreements, and negotiation and implementation of collaboration with key partners.
Provide patent and trade secret protection to peptide therapeutic companies who integrate advanced assay technologies, artificial intelligence and deep chemistry expertise to develop peptide therapeutics for various targets, including protein targets traditionally considered undruggable.
Represent several companies developing targeted therapeutics including antibody therapies, antibody-drug conjugates (ADCs), and multi-paratopic, and multi-target binding agents.
Represent several companies in the diagnostics space, including development and protection for novel immune signatures in various indications including cancer, complement diagnostics, and a variety of others
Serve as IP counsel, including managing worldwide prosecution and supporting deals and public filings, for a molecular diagnostics company focused on disease detection in low-resource settings, including its FDA authorized EUA diagnostic test.

Strategic Transactions

Provide IP counsel to Be Biopharma – including assisting in license agreements and other commercial relationships, fundraising activities, and strategic protection counsel matched to their commercial development timelines – in navigating the complex IP landscapes relating to cellular therapeutics, gene editing generally, and the engineering of B cells.
Represent several investors, as well as early and mid-stage companies in drafting and negotiating a variety of license agreements with academic institutions and large pharma companies.
Represent several early and mid-stage companies in drafting and negotiating a variety of service and/or research agreements in the biotech, small molecule, and bioinformatics industries.
Represent several companies in drafting and negotiating clinical trial and/or patient sample agreements.
Represented Carisma Therapeutics in a $100M+ collaboration agreement with Moderna.
Represented Ingenia Therapeutics in exclusive $3B licensing negotiation with EyeBio that served as an important piece of EyeBio’s acquisition by Merck.