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David P. Halstead
Partner
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David Halstead works with clients in the biotechnology, chemical, and pharmaceutical industries on a wide range of intellectual property issues. He helps clients obtain robust and enforceable patents and navigate the existing patent landscape. Using his experience working with patents and applications in many foreign countries, he helps clients devise effective global patent strategies designed to satisfy the idiosyncratic requirements of foreign patent offices.
David teams with members of the Life Sciences Group to help clients to create and manage relationships with business partners. He evaluates the intellectual property portfolios of target companies to identify strengths, weaknesses, and opportunities to create value by revising patent strategies and addressing latent issues. Using his understanding of the regulatory environment for pharmaceutical and biotech products, David also advises clients regarding product life-cycle management, including Hatch-Waxman and Orange Book issues.
Before beginning his legal career, David obtained his Ph.D. in Organic Chemistry from Harvard University, where he studied the synthesis of complex organic molecules and completed the total synthesis of discodermolide in the laboratory of Professor David A. Evans.
- Represented Proteolix, Inc. on intellectual property matters from their inception until their acquisition in 2009 by Onyx Pharmaceuticals for $276M in cash and up to $575M of additional performance-based payments. In addition to drafting and prosecuting the extensive, global patent portfolio that protected Proteolix’s key products, David also helped Proteolix navigate due diligence with various potential investors, partners, and acquirors.
- Represents one public biotech company for over 10 years on a variety of intellectual property matters. During that period, David has drafted and prosecuted a broad patent portfolio covering diverse biotech and pharmaceutical technologies, including overseeing various successful European and Australian oppositions, managing a relationship with a key biotech collaborator, obtaining creative reach-through claims in both the US and Europe, and successfully defending these claims in a European opposition.
- Represents global pharmaceutical companies, regularly advising them on business-critical issues from identifying and overcoming potential freedom-to-operate issues for biotech, pharmaceutical and consumer health product candidates to the handling of double-patenting issues with minimum impact on exclusivity expiration. In one exemplary project, David advised on the complex interplay of FDA labeling requirements, patent exhaustion, and inducement of patent infringement.
- Represents a publicly-held company that develops drug delivery technologies. In addition to the drafting and prosecution of a global patent portfolio, David advises this company on strategies for navigating a competitor’s patent portfolio while simultaneously structuring the company’s own patent portfolio to maximize exclusive market space and gain leverage in potential licensing negotiations.
Professional & Civic Activities
- Board of Directors, Boston Early Music Festival
- President, Board of Trustees, Musica Sacra
- Co-chair, Life Sciences Committee of the Boston Bar Association's Intellectual Property Section (2007-2009)
©1996-2012 Ropes & Gray LLP. All rights reserved.
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Education
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JD, Harvard Law School, 2002
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PhD (Organic Chemistry), Harvard University, 1999
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BS (Chemistry), summa cum laude, The Pennsylvania State University, 1993
Bar Admissions
- Massachusetts, 2003
- U.S. Patent and Trademark Office, 1999
Memberships & Affiliations
- Boston Bar Association
- Massachusetts Bar Association
- American Chemical Society
- Boston Patent Law Association
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