Education

Albany Law School
JD, 2009, magna cum laude

Pennsylvania State University
PhD, 2005, Integrative Biosciences: Neuroscience
MBA, 2003

State University of New York
BS, 2000

Admissions

Massachusetts

New York

Northern District of New York

US Patent & Trademark Office

US Court of Appeals, Second Circuit

Brian E. Reese, PhD, MBA

Counsel

t 617-248-4755   f 617-248-4000

Dr. Brian Reese is a member of the Firm’s Life Sciences and Intellectual Property groups. He brings a strong knowledge of business and strategy to his practice. In addition to strategic intellectual property counsel, he also assists and advises his clients in the development of strong exclusivity propositions, including patent or other protection for their important assets, as well as in negotiating and closing transactions to monetize those assets. As a former stock analyst, he brings a unique perspective to his practice and understands many of the business realities that his clients face, as well as how intellectual property can help them achieve their goals.

Prior to joining Choate, Dr. Reese was a patent associate at a boutique intellectual property law firm in New York and prior to law school, he worked as a stock analyst covering the life sciences sector at an institutional investment firm outside of Philadelphia

Practice Focus

Intellectual Property Protection:  development of exclusivity propositions including strategic management of intellectual property. Exclusivity propositions can and generally should include a variety of forms of intellectual property including patents, trade secrets, and trademarks and Brian has experience with each of these as well as in contractually-based methods of achieving exclusivity for clients. Brian is also skilled in, complex application drafting and prosecution, particularly in the areas of biocompatible materials, biotechnology and nanotechnology.  

Intellectual Property Due Diligence:  represents early stage clients who are preparing for or in a due diligence process with an eye toward making a client’s portfolio(s) “diligence friendly” and maximizing value of intrinsic client resources, as well as larger clients looking to acquire an asset or company in assessing the quality of the intellectual property and, critically, the business value therein. Components of these services often include assessment of patent scope and quality, patentability and/or patent validity considerations and freedom to operate, both in the US and internationally. Brian also has significant experience in providing clients with evolving patent landscape analyses and non-infringement and invalidity opinions.

Intellectual Property Transactions: represents biotech and other life sciences companies in structuring and negotiating strategic transactions including licensing, collaborations, and other life sciences-related transactions such as research and strategic supply agreements. 

Representative Engagements

  • Advises university and corporate clients of all sizes on intellectual property portfolio strategy, including patent strategy and portfolio management.
  • Prepared and prosecuted patent applications directed to a variety of bio- and nano-technologies including diagnostic and therapeutic products including agricultural biotechnology, microbiome, cell therapies, biocompatible materials and biologically relevant materials.
  • Conducted ongoing landscape and freedom to operate analyses and strategic counseling for life sciences companies as a component of product life cycle management efforts.
  • Represented start-up and small-cap companies with development of intellectual property strategy and helped clients execute that strategy for accelerated growth and successful funding efforts.
  • Represents clients in due diligence analyses, including on nanotechnologies, cell therapies, and biologically relevant materials, in support of licensing, collaboration, and acquisition efforts.

Publications and Presentations

  • “IP and Preparing for Due Diligence”, 15th Annual Conference “The Road from Nanomedicine to Precision Medicine”, BAWA Biotechnology Consulting, September 2017.
  • "Genetic Engineering and Crops: The CRISPR Conundrum," co-author, Genetic Engineering & Biotechnology News, January 2017.
  • "Patent Issues for an Academic Inventor-What, Why, and How?" speaker, American Society for Nanomedicine's 5th Annual Meeting, October 2015.
  • "An Intellectual Property Primer for Nanomedical Researchers and Engineers," chapter author and assistant editor, Handbook of Clinical Nanomedicine: Law, Business, Regulation, Safety and Risk, April 2015
  • "American Bar Association Session on Science and Technology Law," moderator, BAWA Biotechnology Consulting, LLC's Current Issues in Medicine, Biotech and Pharma, September 2014.
  • “Why Patent Quality Matters,” author, Patent Quality Connection, 2011.
  • “Using fMRI as a Lie-Detector – Are We Lying to Ourselves?,” author, Albany Law Journal of Science and Technology, 2009.
  • “Memory-altering Drugs: Shifting the Paradigm of Informed Consent,” co-author, American Journal of Bioethics, 2007.
  • “Elucidation of Stannin Function Using Microarray Analysis: Implications for Cell Cycle Control,” co-author, Gene Expression, 2006.
  • “Functional and Structural Properties of Stannin: Roles in Cellular Growth, Selective Toxicity, and Mitochondrial Responses to Injury,” co-author, Journal of Cellular Biochemistry, 2006.
  • “Protein Kinase C Epsilon Regulates Tumor Necrosis Factor-Alpha-Induced Stannin Gene Expression,” co-author, Journal of Pharmacology and Experimental Therapeutics, 2005.
  • “The Protein Stannin Binds 14-3-3zeta and Modulates Mitogen-Activated protein Kinase Signaling,” co-author, Brain Research Molecular Brain Research, 2005.
  • “Stannin, a Protein That Localizes to Mitochondria, Sensitizes NIH-3T3 Cells to Trimethyltin and Dimethyltin Toxicity,” co-author, Molecular Pharmacology, 2004.

Professional and Community Involvement

Dr. Reese has been appointed Co-Chair of the Nanotechnology Committee of the American Bar Association’s Section of Science & Technology Law, and has served as either the vice chair or co-chair of the committee since 2013.

Brian also makes it a point to serve the community and has been active for years in providing pro bono services to the Center for Women and Enterprise (Boston, MA) and has recently also begun serving the Junior League of Boston.

 

Thank you for reaching out to contact Choate. Before you send your message, we wanted to make sure you are aware of the following. Please do not send any confidential information in response to this link. Sending an e-mail to Choate does not give rise to an attorney-client relationship, and will not be deemed to disqualify Choate from undertaking any engagement for a current or future client.  Before any attorney-client engagement may be formed, Choate will need to check for possible conflicts of interest, you will need to consider whether you wish to retain Choate as counsel, and we will need to consider whether we wish to accept the potential engagement. In the meantime, Choate reserves the right to represent parties with interests adverse to you.

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