Photo of Jonathan P. O

Jonathan P. O'Brien, Ph.D.

Partner
Chair, Intellectual Property Department
Leader, Patent Practice Group

Education

Michigan State University College of Law, J.D.
  • magna cum laude; Full Merit Scholar
  • Jurisprudence Awards in Intellectual Property in the Internet Age; Intellectual Property; and Research, Writing and Advocacy; First-Year Moot Court Competition, 2nd Place Award
Massachusetts Institute of Technology, Ph.D.
  • Chemistry
  • Teaching Award for General Chemistry Recitation
Hope College, B.S.
  • Chemistry
  • cum laude

Prior Employment

  • Miller, Canfield, Paddock and Stone, P.L.C., Senior Partner, 2007-2008; Senior Attorney, 2005-2007
  • Pfizer/Pharmacia Corporation, Patent Agent, 2001-2004
  • Fish & Richardson, P.C., Technology Specialist, 1997-2001

Bar Admissions

Court Admissions

Professional Affiliations

State Bar of Michigan

American Bar Association

  • Subcommittee on biotechnology 
  • Intellectual Property Law Section 

Biotechnology Industry Organization 

MICHBIO

American Intellectual Property Law Association

Overview
Experience
Community
News & Resources
Honors

Overview

Mr. O'Brien is an experienced intellectual property attorney with particular emphasis in life sciences and biotechnology. He earned a doctorate degree in chemistry and has extensive in-house experience with a global pharmaceutical company.

  • Represents universities and domestic and multinational companies of various sizes in life science, biotechnology, telecommunication, battery and medical device industries 
  • Assists clients in a wide range of intellectual property matters, including procuring and enforcing domestic and international patents; negotiating and drafting agreements related to intellectual property transactional matters; conducting intellectual property due diligence for transactional matters; and rendering legal opinions on patent validity and/or patent non-infringement 
  • First to argue the United States Patent and Trademark Office’s calculation of Patent Term Adjustment (PTA) on behalf of a client and received a favorable judgment that secured additional “B Period” PTA for the client and future patent holders

Experience

  • Drafted and prosecuted patents in a variety of technical areas such as pharmaceutical, inorganic and polymer chemistries; biotechnology; material science; physics; nanotechnology; and mechanical engineering 
  • Represented a multinational pharmaceutical company in developing a global patent strategy for a Phase III drug candidate, which involved obtaining patent issuances on the drug substance and implementing a life cycle management plan 
  • Assisted a multinational pharmaceutical company and its European counsel in defending the company’s European patent during opposition proceedings
  • Drafted and negotiated a variety of agreements: patent license, co-development and commercialization, material transfer, and non-disclosure agreements; and clinical trial agreements, including CRADAs 
  • Conducted intellectual property due diligence for venture fund clients regarding potential investments; large pharmaceutical and biotechnology corporations regarding potential asset purchases and mergers; and start-up companies regarding potential licensing of university or third party owned technologies
  • Obtained numerous U.S. Patents, including:
    • U.S. Patent No. D570,532: Light fixture lens and bezel 
    • U.S. Patent No. 7,381,827: Processes and intermediates 
    • U.S. Patent No. 7,354,993: Insecticidal polypeptides and methods of use thereof 
    • U.S. Patent No. 7,305,725: Apparatus for moving objects 
    • U.S. Patent No. 7,220,732: Compounds useful as photodynamic therapeutic agents 
    • U.S. Patent No. 7,002,020: Oxazolidinone combinatorial libraries, compositions and methods of preparation 
    • U.S. Patent No. 6,995,180: Glycinenitrile-based inhibitors of dipeptidyl peptidase IV and methods 
    • U.S. Patent No. 6,774,112: Amino acid complexes of C-aryl glucosides for treatment of diabetes and method 
    • U.S. Patent No. 6,723,729: Compounds useful in preparing camptothecin derivatives 
    • U.S. Patent No. 6,683,056: O-aryl glucoside SGLT2 inhibitors and method 
    • U.S. Patent No. 6,605,609: Thizaine oxazolidinone 
    • U.S. Patent No. 6,562,844: Oxazolidinone combinatorial libraries, compositions and methods of preparation 
    • U.S. Patent No. 6,525,049: Pyrroloquinolones as antiviral agents 
    • U.S. Patent No. 6,500,842: 8-hydroxy-7-substituted quinolines as anti-viral agents 
    • U.S. Patent No. 6,420,360: Sultam and sultone derived oxazolidinones 
    • U.S. Patent No. 6,387,896: Bicyclic oxazolidinones as antibacterial agents
  • Prosecuting numerous patent applications, including: 
    • PCT Application WO 08/106151: Co-crystals and pharmaceutical compositions comprising the same 
    • PCT Application WO 08/106139: Inhibitors of serine proteases for the treatment of HCV infections 
    • PCT Application WO 08/103431: DNAi – Liposomes 
    • PCT Application WO 08/097585: Mutations in human UBIAD1 
    • PCT Application WO 08/094602: Modulators of mitotic kinases 
    • PCT Application WO 08/094574: Furanone compounds and methods of making and using the same 
    • PCT Application WO 08/094556: Imidazolone compounds and methods of making and using the same 
    • PCT Application WO 08/073437: Uses of waste stream from the production of powder coat 
    • PCT Application WO 08/036138: Methods of identifying insect-specific spider toxin mimics 
    • PCT Application WO 08/030584: Indazole derivatives as modulators of interleukin-1 receptor-associated kinase 
    • PCT Application WO 08/027397: Method for identifying protease inhibitors 
    • PCT Application WO 07/142951: Oral controlled release formulations of an interleukin-1 beta converting enzyme inhibitor 
    • PCT Application WO 07/120760: Thiophene-carboxamides useful as inhibitors of protein kinases 
    • PCT Application WO 07/109080: Deuterated Hepatitis C protease inhibitors 
    • PCT Application WO 07/064857: Amphoteric liposome formulation 
    • PCT Application WO 07/038264: GAPR-1 methods

Community

Stuart Area Restoration Association, Chairman

  • Recipient Special Appreciation Award 2008 

3rd Coast Metro Trek, Planning Committee

News & Resources

News

Publications

Seminars & Events

Honors

  • Michigan Lawyers Weekly, Recognized as a Leader in the Law, 2014
  • The Best Lawyers in America, 2012-2014
  • Managing Intellectual Property
    • Recognized as an "IP Star," 2013 and 2014
  • Intellectual Property Management (IAM)
    • Recognized as one of the "World’s Leading Patent Practitioners" for 2014
    • IAM states: "He benefits from being located in an area where he can take advantage of lower cost structures, but is doing work for high-end and high-value clients in the pharmaceutical space.  He has a wealth of in-house experience in the industry."
  • Michigan Super Lawyers
    • Recognized as a Rising Star, 2011, 2013 and 2014
  • 2007 Selected Business Leader Under 40 as Recognized by Business Review

Academic Appointments

  • Massachusetts Institute of Technology, Department of Chemistry
    • T.A. Training Workshop, Assistant, Spring 1993-1996
    • Principles of Quantum Mechanics (5.61), Recitation Instructor, Fall 1994
    • Thermodynamics and Kinetics (5.70), Recitation Instructor, Spring 1992
    • Principles of General Chemistry (5.11), Recitation Instructor and Head Teaching Assistant, Fall 1991