Senior in-house patent attorney with a fourteen-year history of success shepherding antibodies and other biopharmaceuticals from discovery through commercialization. Proven experience developing and defending global patent portfolios and strategically managing a broad range of IP, litigation, licensing and contract issues. Skilled at counseling senior management and influencing internal and external teams across multiple functional areas to creatively resolve complex legal and business issues.
Senior Counsel @ From August 2013 to Present (2 years 5 months) Worcester, MassachusettsAssistant General Counsel, Litigation & IP @ Assistant General Counsel, Litigation & Intellectual Property (2009 – 2013)
Senior Patent Attorney (2006 – 2009)
Patent Attorney (2001 – 2006)
Served as lead in-house counsel for:
• IP and litigation matters for lead antibody products Benlysta and raxibacumab.
• IP and contract issues for contract manufacture of biosimilars and novel biologics.
• Defense of HGS’ officers and Board in securities and shareholder litigation.
Managed prosecution and litigation (including numerous oppositions, revocations and interferences) of extensive IP portfolio through in-house and global external teams. Advised senior management, research and commercial teams on IP and litigation strategy throughout development and commercialization, including patentability, freedom to operate, loss of exclusivity and licensing issues. Coordinated global patent, trademark and litigation strategy with commercial partners. Oversaw multi-million dollar outside counsel budget and cost-sharing with partners. Negotiated and implemented IP-related agreements, amendments and settlements. Oversaw company-wide contract management and monitoring of research collaborations.
Key Accomplishments:
• Developed broad, global patent portfolio for Human Genome Sciences’ lead and pipeline products.
• Successfully defended critical European patent protecting Benlysta antibody product through multiple appeals, ultimately prevailing at the United Kingdom Supreme Court and the European Patent Office Technical Board of Appeal.
• Resolved freedom to operate issue for Benlysta by obtaining favorable judgment in U.S. patent interference and licensing competitor’s global patent portfolio.
• Led in-house team to success at motions phase of U.S. interference proceeding on fusion protein product, securing freedom to operate without outside counsel spend.
• Recognized with Human Genome Sciences President’s Award in 2008 for efforts defending Benlysta. From January 2001 to January 2013 (12 years 1 month) Rockville, MDAssociate @ • Prepared and prosecuted patent applications for therapeutic proteins, drug delivery technology, diagnostic assays, networked payment methods and computer-based color management systems.
• Researched and prepared pleadings and motions during patent infringement litigations involving animal vaccines, bone implants, textile manufacturing and inkjet printers.
• Performed patentability and freedom-to-operate searches and prepared opinion letters.
• Advised pharmaceutical clients on patent strategy and FDA approval issues. From August 1999 to December 2000 (1 year 5 months) Law Clerk @ Assisted with preparation and prosecution of patent and trademark applications (including drafting of drawings) and briefs for patent and trademark appeals. Conducted patentability searches and assisted with preparation of opinion letters. Researched and assisted with drafting of pleadings, motions, briefs, and appeal briefs for patent, trademark, and trade secret litigation. Technologies included oil & gas (valves, casing, and pipeline monitoring and cleaning), fitness equipment, and food service. From August 1998 to May 1999 (10 months) Summer Associate @ From May 1998 to August 1998 (4 months) Law Clerk @ Prepared bench briefs and memoranda for the Honorable James Mehaffy. From May 1997 to August 1997 (4 months)
JD, Law @ University of Houston Law Center From 1996 to 1999 Molecular Virology @ Baylor College of Medicine From 1994 to 1996 BS, Biological Sciences @ Cornell University From 1990 to 1994 Mark Hyman is skilled in: Patent Prosecution, Patent Litigation, Biotechnology, Lifesciences, Litigation, Opposition, Patents, Securities Litigation, Intellectual Property, Patentability, Licensing, Trademarks, Client Counseling, Pharmaceutical Industry, Contract Negotiation, Contract Management