Amster, Rothstein & Ebenstein

Firm overview:

“A very good firm,” says a client who instructs Amster Rothstein on life sciences, chemicals, biologics and pharmaceutical patent prosecution.

Amster Rothstein works with clients to craft business-strategic patent portfolios and

execute offensive and defensive patent prosecution strategies, draft and negotiate technology licences, and counsel on overlapping areas of law, including antitrust and allegations of anticompetitive practices.

The firm’s lawyers have filed for patents on superconductors, semiconductor chips, bioengineered cell lines, surgical probes, offshore drilling platforms, windmills, computer programs, digital communications equipment, and complex machinery.

In dispute resolution, the firm launches vigorous litigation campaigns on behalf of clients. Amster Rothstein has more than 20 attorneys registered to practice before the US Patent and Trademark Office (USPTO). Over 90% of attorneys have technical degrees. The firm has the trial and the appellate experience to advise on post grant Patent Trial and Appeal Board proceedings.

Team overview:

“On life sciences prosecution, I would certainly call Gary Gershik or Brian Amos,” says a client. “They are really outstanding patent practitioners, primarily on the prosecution side of the house.”

Gary Gershik focuses on worldwide patent procurement and enforcement. He represents academic institutions, startups and Fortune 500 companies, in biotechnology, chemistry and pharmaceutical arts. Gershik coordinates IP and regulatory strategy, rendering patentability, validity, infringement and freedom-to-operate opinions. He has drafted and prosecuted hundreds of patents in the US and abroad, and has extensive litigation experience before the Federal Courts and USPTO.

Former research neuroscientist Brian Amos represents universities, research institutions and corporations in cultivating patent portfolios worldwide, in biotechnology, AI applied to diagnostics & medical procedures and other technologies. Amos works with scientists, in-house counsel and Technology Transfer Offices, to protect discoveries through patents and commercialise IP through licensing.

Key matters:

• Gary Gershik advised on consolidated reexaminations of basic patent on NF-Kappa B owned by Harvard University, MIT and the Whitehead Institute. The patent was successfully asserted at district court level against Eli Lilly & Company and Amgen.
• Gershik advised on the prosecution and reexamination of Columbia University’s Axel patents on cotransformation and coamplification which were licensed by more than 30 companies that have paid Columbia more than $600 million in royalties and which were successfully litigated against Roche in Boston, Massachusetts and successfully defended against oppositions in Europe and Japan.
• Gershik advised on the Australian Government’s (CSIRO’s) patents on omega-3 production in terrestrial plants, which were successfully asserted and defended in Federal Court, including multiple related successful IPR and PGR proceedings.

Clients:

Non-Contentious: Columbia University, Meta Materials, OSI Pharmaceutical, Savient Pharmaceutical, Teva Pharmaceutical.

Contentious: Australian Government, Harvard University, MIT, Whitehead Institute.