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Jessica Parezo represents clients in complex intellectual property transactions including licensing, development, and acquisitions of technology assets. Drawing from her extensive experience in patent procurement and enforcement, her practice spans core technology sectors, including life sciences, digital health, software, and energy.

Ms. Parezo drives asset valuation in transactions by developing agile diligence strategies for all aspects of technology protection admist fast-evolving client needs. She directs competitive landscape evaluations, targeted freedom-to-operate analyses, and validity and patentability assessments.

  • Represented purchaser in intellectual property functions for €2.1 billion acquisition of a leader in digital animal health monitoring services.
  • Negotiated intellectual property license on behalf of an international clean energy consortium in-licensing solar technology and artificial intelligence system software for development and financing of 100 megawatt solar power plant to power over 200,000 South African homes.
  • Negotiated patent interests for $300 million royalty monetization transaction involving acquisition and financing of a pharmaceutical client’s license royalty streams.
  • Represented clients in software development and services agreement for artificial intelligence drug design, university collaboration agreement for research and development of power plant operating system analytics software, license and collaboration agreement for development of levitation monorail system, and intellectual property asset transfers in mergers and acquisitions.
  • Directed intellectual property counseling and diligence evaluations, including evaluation of software licenses and customer agreements for acquisition of intelligent data platform technology, freedom-to-operate and patent validity for acquisition of digital health monitoring services, freedom-to-operate on genetic engineering technology for product divestiture, and evaluation of licenses and distribution agreements for pharmaceutical diagnostic kit.   
  • Directed freedom-to-operate, patent validity, and patentability investigations for acquisitions of major pharmaceutical candidates including chimeric antigen receptor, recombinant vaccine, and new chemical entity products.
  • Advised on all intellectual property aspects of a transaction culminating in asset purchase and license purchase agreements for the acquisition of an orphan drug granted fast track FDA designation.
  • Represented Biogen Idec in defeating three IPR challenges by Swiss Pharma against patents covering Tysabri®, Biogen’s biologic drug for multiple sclerosis.
  • Represented Anacor Pharmaceuticals in three IPR proceedings brought by a Coalition for Affordable Drugs entity challenging Orange Book-listed patents for Kerydin®, Anacor’s topical antifungal drug.
  • Directed three successful inter partes reexamination proceedings on behalf of GlaxoSmithKline involving immunization patents owned by Classen Immunotherapies. Advised on co-pending District of Maryland patent litigation.   
  • Represented GlycoVaxyn AG, a start-up biopharmaceutical company, in worldwide prosecution of patents covering an innovative biological conjugation platform for producing vaccines. GlaxoSmithKline subsequently acquired GlycoVaxyn and its early stage vaccines.
  • Represented Merck in procuring patents directed to small molecule pharmaceuticals, including HIV protease inhibitors, angiotensin receptor antagonists, and antifungal compounds.
  • Represented Procter & Gamble in procuring patents directed to antimicrobial quinolones, corticotropin-releasing factor receptor agonists, and various proprietary compounds.
  • Represented Biovail in Hatch-Waxman litigation against Impax in the Eastern District of Pennsylvania involving Biovail’s antidepressant drug Wellbutrin XL®.

Pro Bono

  • Provided employment advice to nonprofit organizations, including local dance company engaged in social justice. 
  • Assisted low-income individuals with navigating Medicare prescription drug coverage.
  • Advised economically disadvantaged DC business entrepreneurs on intellectual property issues.