| Biography:
John P. Isacson is a partner in the Washington, D.C. office of Proskauer Rose
LLP. John's practice focuses on representation of clients in the pharmaceutical,
biotechnology, chemical and medical device technologies in all patent-related
matters, with a particular emphasis on strategic counseling and portfolio management,
due diligence, patent interferences, inventorship and ownership disputes, and
Hatch-Waxman issues. John's clients include internationally recognized
research and health care institutions, emerging ventures, investors, and large
public corporations. John is regularly involved in litigation, arbitrations,
USPTO interferences and other USPTO proceedings.
John received his bachelor's degree in microbiology and biochemistry
in 1984 and his master's degree in applied molecular biology in 1985, both from
the University of Maryland. John graduated with honors from The George
Washington University National Law Center in 1988. After law school, Mr. Isacson
clerked for the Honorable Daniel J. Davidson, Administrative Law Judge at the
U.S. Food and Drug Administration.
Representative Engagements
- In re Pannekoek: Successfully obtained a remand from the U.S. Court
of Appeals for the Federal Circuit to the USPTO Board of Patent Appeals and
Interferences (the Board) for further proceedings to consider the separate
patentability of protein and DNA.
- Recombinant poxvirus technology: Successfully prosecuted a family
of patent applications, first filed in 1982. The representation involved a
patent interference; a civil action under 35 USC 146; and multiple ex parte appeals to the Board. Ultimately, four patents were issued to the National
Institutes of Health with pre-GATT patent terms.
- Tomes v. Carswell: Prevailed in Interference No. 104,453 on behalf
of junior party Tomes, which resulted in issuance of a patent to Pioneer Hi-Bred
International for transgenic corn.
- Schendel v. Curtis: Prevailed in Interference No. 103,443 at the Board and obtained a precedential affirmance from the Federal Circuit for Immunex's patent directed to fusion proteins.
- Represented Celgene Corporation, a multinational biopharmaceutical company, on intellectual property matters in its acquisition of Pharmion Corporation for $2.9 billion.
Publications and Speaking
"How KSR Applies to Patent Applications," Managing Intellectual Property, September 2007
"Becoming 'Boutique' - will a unified patent system survive an age of specialized drug laws?" Legal Times, June 2007
"Minimizing the Element of Surprise," Inside the Minds: Patent Enforcement Best Practices, February 2007.
"The Post-Grant Future," Managing Intellectual Property,
October 2005.
"Keeping the Blockbuster," Drug Delivery Technology, June
2002.
"Pharmaceutical Law in the United States," Managing Intellectual
Property 2002 Life Science Yearbook (James Czaban and John Isacson).
"The Trials and Tribulations of Pharmaceutical Development," 2001
Genetic Engineering News Directory.
"How to Obtain Effective Patents in the U.S.," Managing Intellectual
Property, December 2001.
"How to Protect Genes," Roundtable Discussion, Managing Intellectual
Property, September 2000.
"Maximizing Profits through Intelligent Planning and Implementation,"
Nature Biotechnology, May 2000.
Discussion on the Cipro Patent, "Silicon Spin," Tech TV, February
19, 2002.
Session leader, annual meeting of the Biotechnology Industry Organization,
1996-2004.
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