Paul J. Berman

Paul Berman leads Covington’s intellectual property practice. His experience encompasses patent and trade secret litigation, complex technology transfers and patent prosecution, and strategic intellectual property counseling.  Mr. Berman currently focuses on Hatch-Waxman matters for major pharmaceutical companies and information technologies for a wide range of enterprises. He serves on the Committee for Intellectual Property of the Massachusetts Institute of Technology, and as Special Intellectual Property Counsel for the Smithsonian Institution.

Representative Matters

• Represented Schering-Plough in Hatch-Waxman patent litigation concerning potassium chloride supplements.
• Represented Merck-Medco in patent litigation concerning pharmaceutical benefits processing systems.
• Represented OPNET Technologies in patent and trade secret litigation concerning graphical user interfaces for network analysis software.
• Provided strategic guidance on patent and trade secret issues in litigations involving technologies such as pharmaceuticals, digital image processing, electrodeless lighting, mail processing systems, and digital subscriber line telecommunications.
• Conducted and supervised intellectual property due diligence for transactions involving patents and trade secrets involving, for example, medical devices, drug small molecules, recombinant DNA, telecommunications, computer-telephone interfaces.
  

Honors and Rankings

• PLC Cross Border IP in Business Transactions Handbook (2008-2009)
• Recognized in PLC - Life Sciences, Which Lawyer? for Intellectual Property (2005-2008)

Pro Bono

• Producer and coordinator, semi-annual seminars for Smithsonian Institution Office of General Counsel on developments in intellectual property. These seminars include presentations by Covington lawyers on emerging topics such as trademark dilution, Internet consumer protection and privacy, and domain name registration and disputes.

Publications and Speeches

• Patent Resources Group, Advanced Patent Prosecution, Lecturer (September 2006)
• Biotechnology Mergers and Acquisitions, Saw Seminars International, Lecturer (September 2006)
• Marcus Evans Advanced Software Law & Practice Conference, Sponsor and Seminar Leader (2005)
• Client Presentations, Business Method Patents (2004-2005)
• Client Presentations, Orange Book Best Practices (2003-2006)
• American Conference Institute, Pharmaceutical Patent Life Cycles (2004-2005)
  

• "SanDisk Corporation v. STMicroElectronics, Inc.: The Federal Circuit Expands the Availability of Declaratory Judgment Actions in the Patent Licensing Context," Covington E-Alert (4/9/2007), Co-Author
• "Hatch-Waxman Provisions of the Medicare Prescription Drug, Improvement, and Modernization Act of 2003," Covington Report (12/8/2003)
• "Toward An Effective Europe-Wide Patent System," Current Drug Discovery (May 2003), Co-Author