Overview

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®, and Alunbrig®. He is currently assisting his clients with the development of nearly a dozen late stage pharmaceutical and biotechnology clinical candidates, such as mavacamten, TAK-788, and elascetrant, as potential therapies among a broad range of therapeutic areas, including oncology, cardiology, gastrointestinal and infectious diseases.

Services

Experience

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

Credentials

Education

Admissions

Court Admissions

Recognition

Awards

  • Listed in Chambers USA: America's Leading Lawyers for Business since 2017
    • Recognized as a leading business lawyer in the Intellectual Property field in Michigan; Chambers USA states:
      • 2021 - "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."
      • 2020 - "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."
      • 2019 – "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.'"
      • 2018 – "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."
      • 2017 – "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, 2012-2022
    • Recognized in practice area of Patent Law
  • Michigan Super Lawyers, 2015-2020
    • Recognized as a Rising Star, 2011 and 2013-2014
  • LMG Life Sciences
    • Patent Prosecution, Patent Strategy & Management Attorney of the Year – 2021 – Shortlisted nominee
    • Patent Strategy & Management Attorney of the Year – Midwest, 2019 – Shortlisted nominee
    • Recognized as a Life Sciences Star, 2017-2021
  • IAM Patent 1000: The World’s Leading Patent Professionals, Recognized as one of the World’s Leading Patent Practitioners, 2014-2016, 2019-2021
  • Managing Intellectual Property IP STARS, Recognized as a Patent Star, 2013-2022
  • Leading Lawyers Magazine Michigan, 2017, 2021
    • Recognized in practice areas of Intellectual Property Law and Patent Law
  • 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 & Insights

News

  • Media |
  • Jennifer Sheehan Anderson, Joseph V. Coppola, Sr., J. Michael Huget, Anessa Owen Kramer, Michael A. Lisi, Jonathan P. O’Brien and Leigh C. Taggart are mentioned in the Detroit Legal News as being named IP Stars by Managing IP magazine
    Media |
  • Phillip D. Torrence and Jonathan P. O'Brien, Ph.D. were mentioned in the Kalamazoo Gazette article “At the Watercooler … Kalamazoo people are talking” regarding Honigman’s U.S. News – Best Lawyers “Best Law Firms” rankings
    Media |
  • Jonathan P. O'Brien quoted in the Michigan Lawyers Weekly article “Though McCoy patent satellite branch won’t change attorneys’ workload, other benefits abound”
    Media |
  • Jonathan P. O'Brien and Phillip D. Torrence authored the article "Steps to life science company success" featured in MiBiz
    Media |
  • Honigman, Phillip D. Torrence, Jonathan P. O’Brien and Christopher E. Tracy quoted in article “Turnover in Lansing hurts progress in life sciences” featured in Crain’s Detroit Business 2010 Mackinac Policy Conference edition
    Media |
  • Jonathan P. O’Brien and Noel E. Day authored the article “Deciding the future of gene patents” featured in the Business Review West Michigan’s Health Monthly
    Media |

Press Releases

Publications

  • Publication |
  • Deciding the future of gene patents
    Publication | West Michigan Business Review, MLive.com |
  • Methods and Processes: What Constitutes Patentable Subject Matter
    Publication | LabWork | Powered by MiBiz | Fourth Quarter |
  • Lifting the R&D Organizational Veil under the American Recovery Reinvestment Act
    Publication | Michigan Biosciences LINK, P. 8-9 |
  • 2,444 Coriolis Perturbations
    Publication | Journal of Chemical Physics, 199, 265 |
  • Fourier Transform Infrared Spectroscopic Detection of Low-Frequency Vibrational Modes of Photosystem II Acceptors and the Oxygen-Evolving Complex
    Publication | Biochemistry |
  • Pure Bending Dynamics in Acetylene
    Publication | Journal of Chemical Physics, 109, 121 |
  • Numerical Pattern Recognition in Acetylene Dispersed Fluorescence Spectra
    Publication | Journal of Chemical Physics, 108, 7100 |
  • Anomalously Simple IVR in the Acetylene So State
    Publication | Journal of Chemical Physics, 109, 3831 |
  • Intramolecular Dynamics in the Frequency Domain
    Publication | Advances in Chemical Physics, Vol. 101. John Wiley and Sons, Inc., 463-490 |
  • Highly Excited 12C2H2 in the So State: Complementarity of Absorption and Dispersed Fluorescence Spectra
    Publication | Journal of Chemical Physics, 105, 11357-11360 |
  • The Effects of Triplet Perturbations on Photophysical Processes in the S1 State of Acetylene
    Publication | Journal of Chemical Physics | Accepted 1996
  • The Acetylene So Surface: From Dispersed Fluorescence Spectra to Polyads to Dynamics
    Publication | Ber. Bunsen Phys. Chem., 99, 555-560 |
  • Dispersed Fluorescence Spectrum of Acetylene: Recognition of Polyads and Test of Multiresonant Effective Hamiltonian Model
    Publication | Journal of Chemical Physics, 100, 7797-7809 |
  • Zirconium Compounds of Hexamethyldisiloxane
    Publication | Organometallics, 12, 338 |

Seminars & Events

  • Event | East Lansing, MI | | | Panelist
  • Life Science Industry Breakout Session
    Event | | | Panelist
  • Event | Troy, MI | | | Co-presenter
  • IP Enforcement in Global Markets (US Case Study)
    Event | Shanghai, China | April 8-9, 2010
  • Is Michigan behind life sciences?
    Event |
  • Aligning Your Patent Timing Strategies with Business Objectives in Order to Maximize Your Patent Lifecycle
    Event | New York | February 25-26, 2008 |
  • Introduction to Patent Basics
    Event |
  • Intellectual Property Basics
    Event | Kalamazoo, MI | |
  • Unzipping Dispersed Fluorescence Spectra of Acetylene: Intramolecular Vibrational Redistribution Trends
    Event | Telluride, Colorado |
  • Intramolecular Vibrational Redistribution in Acetylene
    Event | Columbus, OH |
  • Molecular Dynamics in Acetylene: Effective Hamiltonian Models and Optimal Intermediate States for Dispersed Fluorescence Spectra (Rao Prize: Most Outstanding Student Presentation)
    Event | Columbus, OH |
  • Collaborative Learning in the Classroom
    Event | Fall & Spring 1994
  • How to be an Effective Recitation Instructor
    Event | Cambridge, MA | Fall & Spring 1992 |
  • What is X-ray Crystallography?
    Event | Hope College | Fall 1990
Jump to Page

By using this site, you agree to our Privacy Policy and our Disclaimer.