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David P. Halstead
Partner
Ropes & Gray
One International Place
Boston, MA 02110-2624
T +1 617 951 7615
F +1 617 235 0704
+1 617 854 2911 secretary
E-mail
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Practice
David Halstead, a partner in our Intellectual Property Group, focuses his practice on the biotechnology, chemical, and pharmaceutical industries. David is experienced in delivering the full range of intellectual property services to clients, from universities and research institutes to start-up and established companies.
Professional Experience
David advises clients on patent portfolios in diverse technologies, including novel chemical and biological therapies, pharmaceutical formulations and drug delivery devices, chemical synthesis, analytical methods and instruments, nanotechnology, diagnostic agents and methods, carbohydrate chemistry and therapeutics, and polymers. In addition to ex parte patent prosecution, David handles adversarial matters in the U.S. Patent & Trademark Office, including administrative appeals, interferences and recently introduced inter partes reexamination proceedings. Using his experience working with patents and applications in many foreign countries, he has assisted clients with opposition proceedings in both Europe and Australia.
He helps clients devise effective patent strategies, obtain robust and enforceable patents, manage product life-cycles, and navigate the existing patent landscape.
David advises clients regarding Hatch-Waxman and Orange Book issues; conducts due diligence on intellectual property portfolios; identifies potential freedom-to-operate issues; and prepares opinions on freedom-to-operate and patent validity issues. He helps clients put their intellectual property to work. Drafting collaboration agreements, intellectual property licenses, material transfer agreements, non-disclosure agreements, and other documents, he empowers clients to create and manage relationships with partners, collaborators, investors, licensors, and licensees. His experience also includes assisting clients in intellectual property enforcement, including identifying and communicating with potential infringers, litigating patents, and arbitrating disputes.
Before beginning his legal career, David obtained his Ph.D. in Organic Chemistry from Harvard University, where he studied the synthesis of organic molecules and completed the total synthesis of discodermolide in the laboratory of Professor David A. Evans. Drawing on the strong scientific foundation he obtained at Harvard, David has counseled clients in a wide variety of fields, including drug development, biotechnology, pharmaceutical formulation, drug delivery, chemical methodology, polymer science, medical devices, nanotechnology, and materials science.
Publications
- "Double Patenting Balancing Inequities: Overcoming Double Patenting in Today’s World," Bloomberg Law Reports, July, 2010
- "Getting it right the second time: correcting issued patents internationally," IP Review, Autumn 2009
Presentations & Speeches
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American Conference Institute's Hatch-Waxman Boot Camp, July 20, 2010: "Bioequivalence and the 'Same Active Ingredient' vis-à-vis Patentability"
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Panelist, Boston Bar Association and Boston Patent Law Association, Tuesday, September 30, 2008: "Written Description Guidelines for Patents Revisited"
- ACI Biotech Patent Conference, September 17, 2008: "Master Class on Drafting Successful Patent Applications for Biotechnology Related Inventions"
- Boston Bar Association, June 1, 2009: "Beyond Business Methods: Assessing the Impact of Bilski on Life Sciences Inventions"
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)
Memberships & Affiliations
- Boston Bar Association
- Massachusetts Bar Association
- American Chemical Society
- Boston Patent Law Association
Bar Admissions
- Massachusetts, 2003
- U.S. Patent and Trademark Office, 1999
Education
- 2002,
J.D., Harvard Law School
- 1999,
Ph.D. (Organic Chemistry), Harvard University
- 1993,
B.S. (Chemistry), summa cum laude, The Pennsylvania State University
©2010 Ropes & Gray LLP. All rights reserved.
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