Jonathan P. O'Brien, Ph.D.

Dr. Jonathan O'Brien has more than 20 years of experience assisting domestic and multinational companies on global IP portfolio procurement and enforcement strategies. He offers a pragmatic business perspective and has successfully assisted clients with leveraging their IP portfolios by identifying improvements and solutions to minimize risks and maximize strengths while aligning the IP strategy with his clients’ business objectives. His representative clients include companies in a variety of industries, including life sciences (pharmaceutical, biotechnology, nutraceutical, and medical devices), consumer goods, food, telecommunication, industrial chemicals and materials.

Dr. O’Brien has written and prosecuted several hundred patents throughout the world. He has experience rendering legal opinions on patent validity and noninfringement, as well as helping to coordinate global opposition, reexamination, nullity, and infringement proceedings. Dr. O'Brien also has extensive experience with IP due diligence as part of mergers and acquisitions, public and private offerings, and collaborations. He has experience drafting and negotiating a variety of agreements, including patent licenses, co-development and commercialization, material transfer, clinical trial, cooperative research and development agreements (CRADA) amongst others.

Dr. O’Brien has a particularly strong acumen in the life science industry and has worked on number of FDA-approved drugs, including Celebrex®, Bextra®, Zyvox®, Incivek®, Kaledyco®, Orkambi®, Pimodivir®, Fampyra®, Velcade®, Ninlaro®, Adcetris®, Linzess®, Cabozantinib®, Cobimetinib®, Alunbrig®, Exkivity®, and CAMZYOS® amongst others.  He is currently assisting his clients with the development of nearly a dozen late stage pharmaceutical and biotechnology clinical candidates as potential therapies among a broad range of therapeutic areas, including oncology, cardiology, gastrointestinal and infectious diseases.

Practice Areas

Industries

Representative Matters

• 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, including patent license, co-development and commercialization, material transfer, and nondisclosure agreements, as well as 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 startup companies regarding potential licensing of technologies owned by universities or third parties

Prior Experience

• 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

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

Education

Admissions

Court Admissions

Awards

• Listed in Chambers USA: America's Leading Lawyers for Business, 2017-2023
  • Recognized as a leading business lawyer in the Intellectual Property field in Michigan; Chambers USA states:
    • "He is a tremendous communicator." "He is commercially savvy and gives practical, realistic counsel." "He is an excellent IP lawyer who has a vast, deep knowledge and his advice and services are great."
    • "Jonathan provides a very strong level of service and sophistication on matters relating to strategies for developing patent portfolios."
    • "Jonathan O'Brien is a respected attorney in the Michigan IP market. He is held in high regard for his expertise in patents and is well versed in pharmaceutical matters." One client adds "He's a great attorney with impressive knowledge on the industry."
    • "Jonathan O’Brien is noted for his extensive background in chemistry matters, with clients noting him as “very thorough and knowledgeable about chemical patent  law.” Sources add: “He has a depth of intellectual knowledge around chemistry and brings a very practical eye to it."
    • "Jonathan O’Brien is the chair of the firm's intellectual property department. He regularly advises clients on patent and trademark procurement, enforcement matters and post-grant proceedings. An impressed client praised 'his patent prosecution capabilities' before going on to applaud his 'ability to grasp our company's business needs and provide legal advice tailored to our particular needs.'"
    • "Jonathan O'Brien chairs the practice and focuses on IP issues concerning M&A, as well as portfolio management and strategy. 'He is excellent and very business-savvy,' says a client."
    • "In addition to his legal qualifications, O'Brien also has a PhD in chemistry, and clients are particularly impressed by his specialized, sector-specific knowledge, noting that he is 'a high-quality thinker' who is also 'easy to work with.' Clients also state: 'He is particularly knowledgeable about international matters.'"
• The Best Lawyers in America, 2012-2024
  • Recognized in practice areas of:
    • Patent Law
    • Biotechnology and Life Sciences Practice
• Michigan Super Lawyers, 2015-2020
  • Recognized as a Rising Star, 2011 and 2013-2014
• LMG Life Sciences
  • Recognized practitioner for 2023 Patent Strategy Attorney of the Year - Midwest
  • Recognized practitioner for Patent Prosecution, Patent Strategy, & Management - 2017-2022
  • Patent Strategy Attorney of the Year - Midwest - 2022 - Shortlisted nominee
  • Patent Prosecution, Patent Strategy & Management Attorney of the Year – 2021 – Shortlisted nominee
  • Patent Strategy & Management Attorney of the Year – Midwest - 2019 – Shortlisted nominee
• IAM Patent 1000: The World’s Leading Patent Professionals, Recognized as one of the World’s Leading Patent Practitioners, 2014-2016, 2019-2023
• Managing Intellectual Property IP STARS, Recognized as a Patent Star, 2013-2022
• Law Bulletin Media
  • Leading Lawyers, Intellectual Property Law, 2017, 2021, 2023
  • Leading Lawyers, Patent Law, 2017, 2021, 2023
• Michigan Lawyers Weekly, Recognized as a Leader in the Law, 2014
• Business Review USA, Recognized as a Business Leader Under 40, 2007

Professional & Community Involvement

• State Bar of Michigan
• American Bar Association
• Biotechnology Industry Organization 
• MICHBIO
• American Intellectual Property Law Association
• Stuart Area Restoration Association, Chairman
  • Recipient Special Appreciation Award, 2008 
• 3rd Coast Metro Trek, Planning Committee

News

Press Releases

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