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Jeffrey M. Jacobstein
+1 617 646 1664
jeffrey.jacobstein@finnegan.com

Two Seaport Lane
Boston, MA 02210-2001

+1 617 646 1600
Fax +1 617 646 1666

Bar and Court Admissions

  • Massachusetts
  • U.S. Patent and Trademark Office

Education

  • Harvard Law School
    J.D., cum laude, 2010
  • University of Cambridge
    M.Phil., Developmental Biology, 2007
  • Harvard College
    A.B., Neurobiology, summa cum laude, 2006

Jeffrey M. Jacobstein

Associate

Jeffrey Jacobstein focuses his practice on strategic client counseling, portfolio management, patent prosecution, and post-grant proceedings, with an emphasis on biotechnology and the life sciences. His experience covers the full scope of strategic counseling, from prosecution and appeals within the U.S. Patent and Trademark Office (USPTO) to post-grant proceedings and larger portfolio management, diligence, licensing, and opinion work.

Mr. Jacobstein conducts numerous portfolio evaluations and freedom-to-operate assessments, and provides patentability, validity, enforceability, and infringement opinions. He has drafted and successfully prosecuted many new patent applications in the United States and various international jurisdictions.

Mr. Jacobstein represents clients in 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 pharmaceutical products in the United States and abroad. Through this work, he has obtained supplemental protection certificates in Europe, as well as extended patent term in Australia and Japan. Mr. Jacobstein also assists clients with pre-litigation assessments, enforcement of patent rights, and defending against allegations of patent infringement.

Prior to joining Finnegan, Mr. Jacobstein 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.

Highlights

  • 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.
  • Assisted clients in preparing inter partes review petitions of patents covering blood factors and protein sequencing technologies.
  • Successfully defended a patent covering a gastrointestinal drug against challenge in an inter partes reexamination proceeding.
  • Assisted a client in successfully opposing a patent covering a nucleic acid-based diagnostic assay in Europe.
  • Alzheimer's Institute of America, Inc. v. Avid Radiopharmaceuticals (E.D. Pa.). Member of team that successfully defended a client against an allegation of infringement of two patents relating to amyloid beta technology and its use in animal models of Alzheimer’s disease.

Professional Recognition

  • Recognized as a Massachusetts "Rising Star" in Intellectual Property, Super Lawyers published by Thomson Reuters, 2016.

Professional Activities

  • Boston Patent Law Association
  • American Intellectual Property Law Association
  • American Bar Association (co-vice chair, Patents in the Chemical and Life Sciences Committee, Section of Intellectual Property Law, 2017-2018)

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