Charlotte Jacobsen

Partner

Charlotte Jacobsen
  • LLM, Columbia Law School, 2008
  • BVC, Inns of Court School of Law, 2003; Lord Denning Scholarship from Lincoln’s Inn
  • CPE, City University, London, 2002; Lord Brougham Scholarship and Hardwicke Scholarship from Lincoln’s Inn
  • MSc (Forensic Science), King's College London, 2001; Winner of British Academy of Forensic Science National Project Prize
  • MA (Natural Sciences), Gonville & Caius College, Cambridge University, 2000

Qualifications

  • New York, 2009

Court Admissions

  • U.S. District Court for the Eastern District of New York, 2012
  • U.S. Court of Appeals for the Federal Circuit, 2011
  • New York Intellectual Property Law Association
  • Legal 500 – Patent Litigation, Full Coverage (2018)
  • Super Lawyers New York – Rising Star (2014-2017)

Charlotte Jacobsen

Partner

Charlotte Jacobsen is a first-chair litigator whose practice focuses on complex patent disputes concerning biotechnology, pharmaceuticals, and the chemical arts, with an emphasis on litigation under the Hatch-Waxman Act. She has over 15 years of experience litigating on behalf of life sciences companies and has worked on cases concerning anti-cancer drugs, oral contraceptives, immunosuppressants, as well as drugs for treating chronic kidney disease, Alzheimer’s, and Parkinson’s disease. 

An experienced litigator, Charlotte has argued before the United States Court of Appeals for the Federal Circuit, in inter partes review proceedings before the Patent Trial and Appeal Board, as well as in federal district courts in Hatch-Waxman Act litigations. Obtaining substantial experience in all three of these venues is a distinction held by only a limited number of biopharmaceutical patent litigators.

Prior to joining her previous firm, Charlotte practiced as a barrister in the U.K. and was involved in an appeal to the House of Lords, the highest court in the country. She also has experience with patent oppositions before the European Patent Office.

During law school, Charlotte received several scholarships from the Honorable Society of Lincoln’s Inn and was the winner of the Lincoln’s Inn Annual Debating Shield. While obtaining her master’s degree, she was awarded the British Academy of Forensic Science National Project Prize for her research into the use of DNA profiling of bears as a tool to combat illegal poaching in Canada.

Experience

*Experience prior to joining Ropes & Gray

  • Lead counsel representing a global pharmaceutical company in multiple ongoing inter partes review proceedings relating to anti-cancer drug and methods of its use.
  • Lead trial counsel representing a global pharmaceutical company in Hatch-Waxman Act litigation in the District of Delaware concerning the treatment of kidney cancer and pancreatic neuroendocrine cancer. Bench trial resulted in a complete victory for the client, the patents were held valid and infringed.
  • Lead counsel representing a global pharmaceutical company in an inter partes review of a patent on cancer therapy; successfully prevented institution of trial.
  • Represented a global pharmaceutical company in an inter partes review of a compound patent on an immunosuppressant product; patentability of all claims was successfully upheld.
  • Represented a leading international pharmaceutical company in a declaratory judgment suit concerning patents on methods of manufacturing monoclonal antibodies. Successfully settled prior to summary judgment argument on invalidity.
  • Lead trial counsel representing a global pharmaceutical company in a Hatch-Waxman Act litigation in the District of Delaware concerning patents on a transdermal patch product for the treatment of Alzheimer’s disease; won on all issues.
  • Trial counsel representing a global pharmaceutical company in a Hatch-Waxman Act litigation in the District of Delaware concerning an immunosuppressant product. The matter settled favorably.
  • Trial counsel representing a global pharmaceutical company in a Hatch-Waxman Act litigation in the District of Delaware and lead counsel in the appeal resulting from the district court judgment upholding validity and infringement of patents on a transdermal patch product for the treatment of Alzheimer’s disease. The judgment was affirmed.
  • Represented international pharmaceutical company in a Hatch-Waxman Act litigation in the District of New Jersey concerning patent on an oral contraceptive product. The case settled favorably.
  • Represented global biopharmaceutical company in an arbitration before the I.C.C. International Court of Arbitration on a patent license agreement relating to patents on the manufacture of monoclonal antibodies. The licensee was ordered to pay all outstanding royalties.
  • Represented leading biopharmaceutical company in a Hatch-Waxman Act litigation in the District of Maryland concerning patents on polymer based pharmaceutical for the treatment of chronic kidney disease. The case settled favorably. 

Publications

  • Co-author, “USITC: A Powerful Forum for Biologics Patent Owners,” Life Sciences Intellectual Property Review (October 10, 2018)
  • Chapter, “Clinical Innovation: Fair and Effective Incentives for New Uses of Established Drugs” (in print)
  • “Ethicon Endo-Surgery, Inc. v. Covidien LP,” Fitzpatrick Case Update (January 14, 2016)
  • “Patent Reissue Allows Inventors to Hedge Their Bets,” The National Law Journal (October, 2011) 

Presentations

  • Speaker, “IPR Investigation: Diving into IPR Dos and Don'ts,” Life Sciences Patents/Medical Device & MedTech Patents, American Conference Institute (February 21-23, 2018)
  • Speaker, “Plausibility and Second Medical Use Patents,” Innovation in Medicines Conference on Second Medical Uses, University College London/Georgetown Law (February 8-9, 2018)
  • Speaker, “Antibody Therapeutics: May I Have Them All?” BIO International Convention (June 15-18, 2015)
  • Speaker, “Communication with Key Shareholders: Litigation Communication Strategies for In-House Counsel When Actively Engaged in a Paragraph IV Dispute,” Momentum’s Paragraph IV Litigation Strategy Congress (October 29-30, 2014) 
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