Joe Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. He has counseled on or litigated Hatch-Waxman issues involving numerous different drug products. His litigation experience also includes other pharmaceutical, biologicals, industrial enzyme, biofuel production, molecular biology, recombinant technology, protein expression, immunology, drug formulation, drug delivery systems, microelectrodes, licensing, complicated mechanical device, charitable organization trademark and unfair competition, trade dress, product liability, and diversion of goods cases. He also has experience with chemical, mechanical and biological purifications, cloning, transgenic animals, artificial organs, RNAi, stem cells, agricultural biology, screening technologies, industrial chemistry, organic chemistry, inorganic chemistry, synthetic chemistry, biochemistry, enzymatic and mechanical fabric treatments, cell phones, leds, materials, software,and business method technologies.
Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues.
His patent prosecution practice includes strategic patent portfolio development, particularly for Orange Book-listed pharmaceuticals and companies seeking to raise capital through their patent portfolios or looking to monetize their patent portfolios.
Joe also has extensive experience representing foreign clients from around the world, including Brazil, Denmark, Germany, Japan, Korea, Switzerland, and the United Kingdom. This gives him insight into understanding the intellectual property requirements of clients from different cultural backgrounds. He lectures internationally on issues of U.S. patent laws and trends.
He is admitted to practice in New York and Connecticut and before the United Sates District Courts for the Southern and Eastern Districts of New York, the Courts of Appeal for the Second and Federal Circuits, and the United States Supreme Court, as well as before the U.S. Patent and Trademark Office.
- Served as lead IP counsel for a major pharmaceutical company in its $32 billion acquisition of another pharmaceutical company. Handled review of freedom-to-operate and patent exclusivity for more than 20 commercial and pipeline products that focus on rare disease treatments.
- Due diligence and transaction drafting for major pharmaceutical company in its $6.5 billion acquisition of a biotechnology company focused on the treatment for hereditary angioedema, or HAE. Also counseled on royalty provisions, trademark coverage, ownership issues and patent exclusivity.
- Due diligence and transaction drafting for major pharmaceutical company in its $5.2 billion acquisition of a pharmaceutical company that specializes in treatments for rare diseases.
- Represented a leading biological solutions company in patent litigation involving industrial enzymes.
- Represented a diabetes care company in patent litigation related to human growth hormone and insulin.
- Represented a leading R&D company in patent litigation involving clutches and dual mass flywheels.
- Represented a consumer electronics company in patent litigation related to information transmission systems and display drive.
- Representing midsized pharma companies in Hatch-Waxman litigations.