Partner
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. Jeff has been recognized by LMG Life Sciences for his contributions to the fields of "Patent Prosecution" and "Patent Strategy & Management".
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.
Alzheimer's Institute of America, Inc. v. Avid Radiopharmaceuticals
Member of litigation team for Avid in suit concerning amyloid beta technology and its use in animal models in searching for drugs to treat Alzheimer's disease (AD). Obtained jury verdict for Avid on issue of inventorship and patent ownership in 2012; affirmed by the Federal Circuit in 2013. Also obtained a finding of exceptional case, entitling Avid to an award of attorneys' fees. The trial disposed of a series of suits by the AIA against numerous companies involved in scientific research relating to Alzheimer's disease.
2:10-cv-06908, E.D. Pa., Judges Angell, Savage, Cohen (Special Master)
13-1544, 16-2647, Fed. Cir., Judges Hughes, Lourie, Moore, Newman, Plager
Finnegan tees up valuable patents for Eisai, leading to major strategic collaboration agreement
Kaken Pharmaceutical Co., Ltd.; Bausch Health Care v. Zydus Pharmaceuticals (USA) Inc. et al.
Successfully led Kaken and Bausch Health Care in inter partes review (IPR) proceedings, district court litigation, and Federal Circuit appeal related to patent covering Kaken and Bausch Health Care’s Jublia® (efinaconazole) product for the treatment of onychomycosis.
3:18-cv-13635, D.N.J., Judges Martinotti, Goodman
18-2232, Fed. Cir., Judges Newman, O'Malley, Taranto
IPR2017-00190, PTAB, Judges Mitchell, Franklin, Pollock
IPR2017-01429, PTAB, Judges Mitchell, Franklin, Pollock
Eli Lilly and Company v. Genentech, Inc.
PGR2019-00043, PTAB, Judges Mitchell, Paulraj, Cotta
3:18-cv-01518, S.D. Cal., Judge Sammartino
Event
Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law
May 2, 2024
Cambridge
Articles
How to Avoid Common Pitfalls and Protect IP in Today’s Life Sciences Industry Joint Ventures How to Avoid Common Pitfalls and Protect IP in Today’s Life Sciences Industry Joint Ventures
February 29, 2024
The Marker/Start IsraelEvent
Prosecuting and Challenging Patent Applications/Careers in IP Law: A World of Possibilities Prosecuting and Challenging Patent Applications/Careers in IP Law: A World of Possibilities
February 28, 2024
Virtual
Event
Introduction to Patents and Patent Law Introduction to Patents and Patent Law
February 7, 2024
Virtual
Prosecution First Blog
Federal Circuit Follows Through on Amgen Enablement Analysis in Baxalta Inc. v. Genentech Federal Circuit Follows Through on Amgen Enablement Analysis in Baxalta Inc. v. Genentech
January 5, 2024
Articles
Supreme Court Weighs Major IP Pharma Issue Supreme Court Weighs Major IP Pharma Issue
May 16, 2023
Haaretz Biomed Magazine"Jeffrey is very responsive, accommodating and a great team player."
Intellectual Asset Management Patent 1000
“Jeffrey Jacobstein and Jill MacAlpine – both are extremely responsive and always willing to help and get the job done even with tight deadlines. They are very creative and resourceful. They have great skill in drafting as well as prosecuting applications. They handle very complex cases for me and have done so wonderfully. They have a great team and work well with and use the more junior associates appropriately. They are both excellent to work with.”
Legal 500 United States
“Jeffrey Jacobstein and Eric Raciti are other experienced lead partners and sophisticated counsellors.”
Intellectual Asset Management Patent 1000
"Jeffrey is very responsive, accommodating and a great team player."
Intellectual Asset Management Patent 1000
“Jeffrey Jacobstein and Jill MacAlpine – both are extremely responsive and always willing to help and get the job done even with tight deadlines. They are very creative and resourceful. They have great skill in drafting as well as prosecuting applications. They handle very complex cases for me and have done so wonderfully. They have a great team and work well with and use the more junior associates appropriately. They are both excellent to work with.”
Legal 500 United States
“Jeffrey Jacobstein and Eric Raciti are other experienced lead partners and sophisticated counsellors.”
Intellectual Asset Management Patent 1000
Award/Ranking
Managing Intellectual Property Names Four Finnegan Partners 2023 Rising Stars Managing Intellectual Property Names Four Finnegan Partners 2023 Rising Stars
October 18, 2023
Managing Intellectual PropertyAward/Ranking
Finnegan Upholds Tier 1 Marks in 2023 LMG Life Sciences Rankings Finnegan Upholds Tier 1 Marks in 2023 LMG Life Sciences Rankings
September 21, 2023
LMG Life SciencesAward/Ranking
Finnegan Shortlisted in 10 Categories in the LMG Life Sciences Awards 2023 Finnegan Shortlisted in 10 Categories in the LMG Life Sciences Awards 2023
July 25, 2023
LMG Life SciencesPress Release
Finnegan Receives Top Rankings from Intellectual Asset Management; 46 Attorneys Ranked Finnegan Receives Top Rankings from Intellectual Asset Management; 46 Attorneys Ranked
June 30, 2023
Intellectual Asset ManagementPress Release
The Legal 500 Ranks Finnegan a Top Tier Firm for 2023 The Legal 500 Ranks Finnegan a Top Tier Firm for 2023
June 12, 2023
The Legal 500Announcement
Managing Intellectual Property Recognizes Three Finnegan Partners as Rising Stars Managing Intellectual Property Recognizes Three Finnegan Partners as Rising Stars
October 12, 2022
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