Charlotte Jacobsen is a first-chair litigator with over 15 years of experience litigating complex pharmaceutical and biotechnology patent and licensing disputes. Charlotte has been lead trial counsel and won cases in the federal district courts, before the Court of Appeals for the Federal Circuit, and inter partes review proceedings before the Patent Trial and Appeal Board. She also has extensive experience with pre-litigation work having handled comprehensive preparatory investigations for blockbuster drugs. Additionally, Charlotte has handled arbitrations before the American Arbitration Association (AAA) and the International Chamber of Commerce (ICC).
As a skilled litigator, Charlotte frequently provides strategic advice concerning ongoing patent litigations, including assessing the risks associated with ANDA and other patent litigations for private equity and M&A deals.
In addition, Charlotte is admitted to practice in England & Wales and provides her clients with a unique global perspective. Prior to joining her previous firm, Charlotte practiced as a barrister and handled cases before every venue of importance in the U.K., including the Supreme Court of the United Kingdom. Charlotte also has significant experience with patent oppositions before the European Patent Office. Over the last decade, Charlotte has coordinated multiple international life sciences litigations, skillfully devising and executing global litigation strategies.
Charlotte has a deep understanding of biology and biotechnology. She has handled cases concerning small molecule and biologic therapeutics, platform technologies, compounds, methods of treatment, and diagnostic methods. Charlotte’s cases have spanned a broad range of therapeutic areas, including oncology, immunosuppression, oral contraception, chronic kidney disease, as well as Alzheimer’s and Parkinson’s diseases. While obtaining her master’s degree, Charlotte was recognized by the British Academy of Forensic Science for her research into the use of DNA profiling of bears to combat illegal poaching in Canada.
Charlotte regularly speaks and writes on developments in patent law concerning Hatch-Waxman and BPCIA matters. She is also consistently recognized for her outstanding work by organizations such as Legal 500.
- Representing a global pharmaceutical company in a pre-litigation investigation concerning multiple biologics patents under the BPCIA.
- Representing Genosity in a litigation brought by Natera concerning genetic testing kits in the District of Delaware.
- Represented ArcherDX in patent infringement litigations filed by Natera relating to methods of amplifying and sequencing cell-free DNA in the District of Delaware.
- Representing a global biotech company in a patent licensing dispute in AAA arbitration in New York.
- Lead counsel representing a global pharmaceutical company in multiple inter partes review proceedings relating to anti-cancer drug and methods of its use. The matter settled favorably.*
- 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. Successfully coordinated global litigation, including proceedings in Canada, Japan, and Europe.*
- 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. Coordinated global litigation, including proceedings in Europe.*
- 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. Successfully coordinated global litigation, including proceedings in Canada and Europe.*
- 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. *
- Co-author, “U.S. District Court Adopts Expansive Definition of aBLA ‘Submitter’ ” Kluwer Patent Blog (September 20, 2021)
- Co-author, “Precision Matters: Trends in Genetic Sequencing Litigation” Ropes & Gray LLP (August 2021)
- Co-author, “Carve outs and Causation: Moving Away From Hypothetical Hatch-Waxman Infringement,” Kluwer Patent Blog (August 24, 2021)
- Co-author, “A Cautionary Tale for Assignment of Rights in U.S. Patents,” Kluwer Patent Blog (August 17, 2021)
- Co-author, “U.S. Federal Circuit Continues To Pressure BioPharma For More When It Comes To Functional Claims,” Kluwer Patent Blog (February 19, 2021)
- Co-author, “Hatch-Waxman Venue Issue Still Live After Fed. Circ. Ruling,” Law360 (January 6, 2021)
- Co-author, “Willful Blindness and Enhanced Damages: Is Ignorance Bliss?,” Kluwer Patent Blog (April 6, 2020)
- Co-author, “Does Willful Blindness Beget Enhanced Patent Damages?,” Law360 (February 28, 2020)
- Co-author, “Balancing Obviousness and Written Description Defenses in the Age of Personalized Medicine,” Ropes & Gray LLP (December 18, 2019)
- 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)
- Speaker, “Patent Term Extension Developments in the U.S. and Europe: Examining the Implications of Biogen v. Banner and Deciphering Europe’s SVC Manufacturing Waiver,” ACI’s 19th Advanced Summit on Life Sciences Patents (July 22, 2021)
- Speaker, “Cross-Border IP Protection and Enforcement in a Changing Landscape,” 3rd Annual International IP Summit (October 20-23, 2020)
- Speaker, "Federal Circuit: A Year in Review," MIP Virtual Life Sciences Forum (September 23, 2020)
- Speaker, “Written Description and Enablement in Antibody Arts: How Has the Scope of Claim Shifted in the U.S., Europe, and Japan?” ACI’s 18th Annual Life Sciences Patents Conference (August 5-6, 2020)
- Speaker, " Willful Blindness and Enhanced Damages: Litigation and Patent Search Policy," IPO Webinar (April 9, 2020)
- Speaker, “2019 IP Litigation in Review and How New Case Law Affects Your Litigation Strategy,” Managing IP International Women’s Leadership Forum in San Mateo, California (December 3, 2019)
- Speaker, “Doing Business in China,” Roundtable Series, International IP Summit, Boston College Law School (October 17-18, 2019)
- Speaker, “Misdeeds and Major Ramifications for Patent Litigation – A Survey of Recent Case Law Relating to Attorney’s Fees and Consequences of Bad Behavior During Dealmaking, Prosecution and Litigation,” Managing IP Life Sciences Forum (September 18, 2019)
- Speaker, “Misdeeds and Major Ramifications for Patent Litigation – A Survey of Recent Case Law Relating to Attorney’s Fees and Consequences of Bad Behavior During Dealmaking, Prosecution and Litigation,” Ropes & Gray Life Sciences Quarterly Seminar (June 25, 2019)
- Speaker, “New §101 Landscape: Exploring the Latest Developments at the PTO and District Court Relative to Patent Eligibility,” 17th Advanced Summit on Life Sciences Patents (May 15-17, 2019)
- Speaker, “The Present State of Paragraph IV Litigation and Its Impact on the Pharmaceutical Industry: Trends, Legal Analyses and Business Prognoses,” 13th Annual Paragraph IV Disputes (April 29-30, 2019)
- Speaker, “How Do We Ensure Effective Protection of Antibodies?,” World IP Review Life Sciences Patent Network Conference (April 25, 2019)
- Speaker, “Year in Review: How New Case Law Affects Litigation Strategy,” Managing Intellectual Property International Women’s Leadership Forum 2018 (December 4, 2018)
- Speaker, “Strategies in Second Medical Use Cases,” World IP Review Life Sciences Patent Network (October 16, 2018)
- Speaker, “Patent Trial & Appeal Board (PTAB) to Give Patent Owners the Last Word,” Ropes & Gray Webinar (August 20, 2018)
- 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)
- LLM, Columbia Law School, 2008; Harlan Fiske Stone Scholar
- 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
Admissions / Qualifications
- New York, 2009
- England and Wales, Barrister, 2003
- U.S. District Court for the Eastern District of New York, 2012
- U.S. Court of Appeals for the Federal Circuit, 2011
- LMG Life Sciences “Leading Life Sciences Lawyer” (2019-2021)
- Legal 500 – Patent Litigation, Full Coverage (2018)
- Super Lawyers New York – Rising Star (2014-2017)