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Paul Berman's experience encompassed patent and trade secret litigation, complex technology transfers and patent prosecution, and strategic intellectual property counseling. Mr. Berman focused on information technologies for a wide range of enterprises including financial institutions, and Hatch-Waxman matters for life sciences enterprises. He serves on the Committee for Intellectual Property of the Massachusetts Institute of Technology.
- Represented JPMorgan Chase in patent litigations involving computerized marketing systems and electronic check processing.
- 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.
- Represented Schering-Plough in Hatch-Waxman patent litigation concerning potassium chloride supplements.
- Represented Auxilium Pharmaceuticals in Hatch-Waxman patent litigation concerning testosterone gel products.
- 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.
- Negotiated technology transfer and development transactions involving start-ups, multinationals and universities for patent and trade secret rights to drug and biologic products, computer applications, product recycling systems, and financial systems and products.
- Advised pharmaceutical companies on Hatch-Waxman aspects of the Federal Food, Drug, and Cosmetic Act and the Patent Code, including FDA Orange Book patent listings and patent term restoration applications.
- Prepared and prosecuted patent applications for a wide range of technologies, including financial and insurance products, telecommunications, information technologies, pharmaceuticals, dietary supplements, and methods of using drugs.
Pro Bono
- Represented Mother Assisted Nutritive Aid and Children’s Investment Fund Foundation on issues pertaining to patents held by Nutriset directed to ready-to-use-food products used to treat malnutrition in children.
June 3, 2016
NEW YORK—Covington advised the underwriters in connection with Repligen’s $115 million debt offering. The senior convertible notes due in 2021 were placed at 2.125 percent. Repligen is a bioprocessing company focused on the manufacture of Protein A ligands used by life science companies to purify biologic drugs such as monoclonal antibodies, recombinant ...
Covington Represents Underwriters in Senseonics' IPO
March 24, 2016
NEW YORK - Covington advised the underwriters in the $45 million initial public offering of common stock of Senseonics Holdings, Inc. The offering closed on March 23, 2016. Shares of Senseonics trade on the NYSE MKT under the ticker “SENS.” Senseonics develops continuous glucose monitoring systems for patients with diabetes. Its Eversense product consists of ...
Covington Advises Meda on Acquisition of Jazz Pharmaceuticals’ Women’s Health Products
September 6, 2012
LONDON, 06 September, 2012 — Covington & Burling LLP acted as legal advisers to Meda in an agreement with Jazz Pharmaceuticals to acquire a portfolio of six pharmaceutical products for women for $95 million in cash. The largest and most important product in the portfolio is Elestrin, a patented product with sales of almost 100 MSEK, that doctors prescribe for ...
March 23, 2012, Covington E-Alert
February 15, 2011
WASHINGTON, DC, February 15, 2011 — For the seventh time, Practical Law Company has awarded Covington & Burling LLP its worldwide first place ranking in the Life Sciences Regulatory Super League category. PLC also singled out Covington’s Antitrust/Competition, Corporate, and Insurance practices, along with lawyers from each group, in its practice-specific ...
June 23, 2010
WASHINGTON, DC, June 23, 2010 — Covington & Burling LLP received 85 individual mentions and 23 practice mentions in the Legal 500 US 2010 edition. Legal 500 reviews the strengths and strategies of law firms in more than 90 countries in Europe, the Middle East, Asia, North and South America, and the Caribbean. Here are the Covington lawyers and practices ...
Advanced Patent Prosecution & Biotechnology Mergers and Acquisitions Presentations
September 2006, Patent Resources Group conference and Saw Seminars International
Mr. Berman was a lecturer at both of these panels.
Client Presentations
2006
Mr. Berman has participated in presentations for Business Method Patents (2004-2005) and Orange Book Best Practices (2003-2006).
Marcus Evans Advanced Software Law & Practice Conference
2005
Mr. Berman was a Sponsor and Seminar Leader.
Pharmaceutical Patent Life Cycles
2004-2005, American Conference Institute
Mr. Berman presented at this conference.
Hatch-Waxman Provisions of the Medicare Prescription Drug, Improvement, and Modernization Act of 2003
December 8, 2003, Covington Report
May 2003, Current Drug Discovery
April 2002, 2 Patent Strategy & Management No. 12
American Inventors Protection Act
May 23, 2001, Covington Report
- Legal 500 US, Patent Litigation - Full Coverage (2016)
- Legal 500 US, Intellectual Property - Patent Prosecution (2012-2013)
- PLC Cross Border IP in Business Transactions Handbook (2008-2009)
- Recognized in PLC - Life Sciences, Which Lawyer? for Intellectual Property (2005-2010) and Patent Litigation (2011-2012)
Practices
Education
Harvard Law School, J.D., 1975
- cum laude
Harvard University, A.B., 1972
- magna cum laude
- Phi Beta Kappa
Bar Admissions
- District of Columbia
- U.S. Patent and Trademark Office