Jeffrey M. Jacobstein

Jeffrey focuses on strategic client counseling, including due diligence, patent prosecution, and post-grant proceedings, with an emphasis on biotechnology and life sciences. He has led teams handling all intellectual property (IP)-related aspects of multi-billion dollar deals for several large pharmaceutical clients. His experience also includes prosecuting and appealing applications within the U.S. Patent and Trademark Office (USPTO), as well as larger portfolio management, diligence, licensing, and opinion work. Jeffrey has been recognized by LMG Life Sciences as Patent Strategy Attorney of the Year, New England, and honored for his contributions to the fields of “Patent Strategy & Management” and “Patent Prosecution.” He has also been identified by The Legal 500 U.S. as one of the leading lawyers in patent prosecution. Jeffrey previously served as leader of the firm’s patent office practice.

Jeffrey has conducted hundreds of evaluations for acquisition, partnership, diligence, clearance, and freedom-to-operate (FTO) assessments, and has extensive experience providing patentability, validity, enforceability, and infringement opinions. He has 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 also plans for and acquires patent term extensions (PTEs) and supplemental protection certificates (SPCs) for approved biologic and pharmaceutical products in the United States and abroad.

Jeffrey represents clients during inter partes review (IPR) and appeal proceedings before the Patent Trial and Appeal Board (PTAB) and in reissues and reexaminations at the USPTO. He also assists clients with pre-litigation assessments, enforcement of patent rights, and defending against allegations of patent infringement.

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.