February 8, 2023

Volume XIII, Number 39

Jeffrey M. Jacobstein

Jeffrey Jacobstein brings nearly a decade of experience in sophisticated counseling and successful resolution of contentious proceedings to his practice with clients in the biotechnology and life science spaces.

Jeffrey focuses his practice on strategic client counseling, including due diligence, patent prosecution, and post-grant proceedings, with an emphasis on biotechnology and the life sciences. His experience includes prosecuting and appealing applications within the U.S. Patent and Trademark Office (USPTO), as well as post-grant proceedings and larger portfolio management, diligence, licensing, and opinion work.

Jeffrey has conducted numerous evaluations for diligence, clearance, and freedom-to-operate assessments, and has extensive experience providing patentability, validity, enforceability, and infringement opinions. He has also drafted and successfully prosecuted many new patent applications in the United States and various international jurisdictions, advising clients on all aspects of portfolio management along the way.

Jeffrey represents clients during inter partes review (IPR) and appeal proceedings before the Patent Trial and Appeal Board (PTAB) and in reexaminations at the USPTO. He also plans for and acquires patent term extensions for approved biologic and pharmaceutical products in the United States and abroad. Through this work, he has obtained supplemental protection certificates for clients in various European jurisdictions, as well as extended patent term in Australia and Japan. Jeffrey also assists clients with pre-litigation assessments, enforcement of patent rights, and defending against allegations of patent infringement.

Jeffrey worked closely with a client to obtain extended patent term protection in the United States, Europe, Australia, and Japan for patents relating to pediatric conjugate vaccines, including successful appeals in several European jurisdictions. He has assisted clients in preparing inter partes review petitions of patents covering blood factors and protein sequencing technologies. He successfully defended a patent covering a gastrointestinal drug against challenge in an inter partes reexamination proceeding, and assisted a client in successfully opposing a patent covering a nucleic acid-based diagnostic assay in Europe.

Prior to joining Finnegan, Jeffrey worked as a research biologist, gaining extensive laboratory experience in microscopy and molecular biology techniques. His master’s thesis focused on the development and function of neurons in the zebrafish spinal cord. He coauthored the article, “Zebrafish V2 Cells Develop into Excitatory CiD and Notch Signaling Dependent Inhibitory VeLD Interneurons,” Developmental Biology, July 2008.

Articles in the National Law Review database by Jeffrey M. Jacobstein

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