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Natalie M. Derzko

Of Counsel

Washington +1 202 662 5301

  • About
  • Representative Matters
  • Credentials
  • About

    Natalie Derzko is of counsel practicing in the areas of intellectual property, strategic counseling, due diligence, patent prosecution, patent litigation, intellectual property policy and law reform.  She procures patents and counsels clients on patent matters in a range of technology areas, including pharmaceuticals, biotechnology, nutritional supplements, food and environmental technology, and industrial and consumer chemicals. She also counsels clients regarding Bayh-Dole issues and regulatory issues arising under the Hatch-Waxman legislation. Natalie earned a doctorate from Columbia in which her thesis focused on Hatch-Waxman issues.

    She has written and spoken to various audiences on general and specific patent matters and has previously taught “Legal Aspects of Biotechnology” at Johns Hopkins University.

    Areas of Expertise

  • Practices and Industries
  • Representative Matters
    • Strategic patent prosecution advice and representation of various life sciences companies before the U.S. Patent and Trademark Office.
    • Advice to various clients regarding Orange Book listing matters.
    • Patent policy analysis, advice and advocacy on various international and domestic patent issues, and in the Bayh-Dole, Hatch-Waxman and follow-on-biologics areas.
    • Preparation, filing, and prosecution of patent term extension (restoration) applications, including attention to complex issues relating thereto,
    • Advice to pharmaceutical companies regarding the Bayh-Dole Act and regarding negotiating a CRADA relationship with the NIH.

    • Bayh-Dole advice to varied life sciences companies relating to subject inventions and domestic manufacturing issues.
    • Expert witness in Hatch-Waxman case on Orange Book patent listing and patent term extension issues and general advice to varied pharmaceutical companies in these areas.
    • Strategic patent advice and assistance on various pre-litigation assessments and litigation matters in the pharmaceutical and biotechnology areas.
    • Developing scientific case strategy for a Hatch-Waxman patent litigation matter.
    • Patent due diligence projects pertaining to financings of emerging biotechnology companies.
    • Leading role on an extensive patent due diligence project for a pharmaceutical company that acquired an oncology pharmaceutical product line.
    • Leading role in providing transactional and due diligence patent advice to a pharmaceutical company in its acquisition of certain animal health assets.

    Areas of Expertise

  • Credentials
    Education
    • Columbia Law School, J.S.D., 2005
        • Julius Silver Fellow in Law, Science and Technology
    • Johns Hopkins University, M.S., 2001
        • Biotechnology
    • Harvard Law School, LL.M., 1995
        • Fulbright Scholar
        • Harvard Environmental Law Review, Line Editor
    • Osgoode Hall Law School, J.D., 1993
        • Osgoode Hall Law Journal, Senior Editor
    • Trinity College, University of Toronto, B.S., 1991
    Bar Admissions
    • Canadian Patent Office
    • District of Columbia
    • Massachusetts
    • New York
    • Ontario
    • U.S. Patent and Trademark Office
    Judicial Clerkship
    • Hon. John Sopinka, Supreme Court of Canada, 1993 - 1994
    Languages
    • French
    • Ukrainian
    Pro Bono
    • Volunteering at the DC Bar’s Landlord Tenant Resource Center
    • Advice to an educational foundation on intellectual property ownership and Bayh-Dole related issues.
    Accolades
    • Legal Elite, Washington SmartCEO (December 2009)

    Areas of Expertise

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