Joseph Robinson

Joseph R. Robinson helps clients resolve a range of intellectual property challenges with his deep legal experience and business acumen. He advises both at a strategic level and on day-to-day issues to ensure clients derive maximum value from their IP assets.

Joe has more than 30 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 and biosimilar litigation; inter partes proceedings; licensing; counseling; due diligence; patent and trademark prosecution and strategy; and mergers and acquisitions.

Joe is an advisor on life sciences to the White House Office of American Innovation and is a reviewer for the peer-reviewed Nature Biotechnology. He also covers Federal Circuit matters for IP Watchdog.

Joe represents clients in a variety of patent and trademark disputes in jurisdictions throughout the United States, and as appellate counsel before the Court of Appeals for the Federal Circuit. He is particularly known for his experience handling complex Hatch-Waxman litigation, biosimilar matters and Bayh–Dole Act issues.

Joe has been intellectual property counsel on more than $110 billion in mergers, acquisitions and licenses for big pharma, midsize pharma, small pharma and startups. His services include strategic issues, valuation, structuring, negotiations and drafting.

Joe handles complex inter partes matters before the U.S. Patent and Trademark Office, inventorship disputes, and reissues. He counsels on patent-related FDA issues, including citizen petitions, Orange Book listings and trademark issues, particularly with respect to pharmaceutical and biologic trademarks. His patent prosecution practice includes strategic patent portfolio development, particularly for Orange Book-listed pharmaceuticals and companies.

Joe represents clients from countries including the United States, Brazil, Denmark, Germany, Japan, South Korea, Switzerland and the U.K. He lectures internationally on issues concerning U.S. patent laws and trends.

Representative Matters :

• 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.
• Conducted due diligence and transaction drafting for a 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 leading R&D company in patent litigation involving clutches and dual-mass flywheels.
• Represented a consumer electronics company in patent litigation related to its information transmission systems and display drive.

EDUCATION :

• Elizabeth Haub School of Law at Pace University, J.D., cum laude, 1988
• Rensselaer Polytechnic Institute, B.S., 1973

BAR ADMISSIONS : U.S. Patent and Trademark Office, New York

COURT ADMISSIONS :

• U.S. District Court for the Eastern District of New York
• U.S. Court of Appeals for the Federal Circuit
• Supreme Court of the United States