Paul J. Berman

About
Representative Matters
Credentials

About
Paul Berman's experience encompassed patent and trade secret litigation, complex technology transfers and patent prosecution, and strategic intellectual property counseling. Paul 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.
Areas of Expertise

Corporate

Technology and IP Transactions

Regulatory and Public Policy

Food, Drug, and Device

Public Policy

Government Contracts

Copyright and Trademark Counseling and Prosecution

Litigation and Investigations

Patent Litigation

Energy

Communications and Media

Life Sciences

Life Sciences Litigation and Investigations
Practices and Industries
Representative Matters
- 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.
Areas of Expertise

Corporate

Technology and IP Transactions

Regulatory and Public Policy

Food, Drug, and Device

Public Policy

Government Contracts

Copyright and Trademark Counseling and Prosecution

Litigation and Investigations

Patent Litigation

Energy

Communications and Media

Life Sciences

Life Sciences Litigation and Investigations

Credentials

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
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.
Accolades	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)

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Paul J. Berman

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