Dr. Roland J.Graf

European Counsel

Munich + 49.89.20.60.42.200

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Dr. Roland Graf focuses his practice on biotech and pharma patents, involving technical fields such as small molecule cancer therapeutics, antibodies, and enzyme replacement therapies. In addition to patent drafting, prosecution, opposition, and appeal proceedings, Roland has particular experience in creating Supplementary Protection Certificate portfolios covering the majority of European jurisdictions. He also has experience in vindication proceedings and German compulsory license proceedings. Prior to joining Jones Day in 2011, Roland worked in the biotechnology group of a German intellectual property firm located in Stuttgart.

Roland is a molecular biologist by training, but he has worked in other scientific disciplines including structural biology, biochemistry, and immunology. Roland's masters and doctoral theses, which he obtained at the International Max Planck Research School for Molecular Biology, involved molecular aspects of aberrant cell migration in the Drosophila model. His broad scientific background gives him a deep understanding of both the analytical and medical aspects of pharmaceutical research. In addition, he has experience in the field of medical technology including endoluminal prostheses, such as stents and artificial heart valves, and retina-implants.

Roland is a member of the Institute of Professional Representatives before the European Patent Office (epi), the German Patent Bar Association, and the German Association for the Protection of Intellectual Property (GRUR).

Experience

  • Puma Biotechnology obtains dismissal of opposition against its European patent relating to treatment for gefitinib/erlotinib-resistant cancers and cancers with T790M EGFR mutationAfter nearly 10 years of opposition and appeal proceedings, on behalf of Puma Biotechnology, Inc., Jones Day obtained dismissal of an opposition against a European patent, which broadly covers the use of irreversible inhibitors for the treatment of gefitinib/erlotinib-resistant cancers, as well as cancers with the T790M EGFR mutation.
  • Celgene acquired by Bristol-Myers Squibb for approximately $74 billionJones Day advised Celgene Corporation (NASDAQ: CELG) in connection with the intellectual property and technology transactions aspects of its cash-and-stock merger with Bristol-Myers Squibb (NYSE: BMY) which has an equity value of approximately $74 billion.
  • Puma Biotechnology defends European patent licensed from Pfizer covering Neratinib extended adjuvant therapy for HER2+ breast cancer in opposition proceedingsJones Day represents Puma Biotechnology, Inc. in European opposition proceedings initiated by Hexal to defend a patent licensed from Pfizer covering Neratinib extended adjuvant therapy for HER2+ breast cancer.
  • Koch-Glitsch acquired Julius Montz from Pfaudler GroupJones Day advised Koch-Glitsch, a subsidiary of Koch Engineered Solutions (KES) and its parent company Koch Industries, Inc., in the acquisition of chemical and pharmaceutical process equipment and technology supplier Julius Montz GmbH (Montz) from the Pfaudler Group, a portfolio company of Deutsche Beteiligungs AG (DBAG).
  • Arsenal Capital Partners acquires HistoGeneX and Caprion BiosciencesJones Day advised Arsenal Capital Partners on major investments in HistoGeneX and Caprion Biosciences and the subsequent combination of the two businesses.
  • KWS and J.R. Simplot Company establish joint venture for hybrid potato breedingJones Day advised KWS SAAT SE in the formation of a joint venture company, Aardevo B.V., with J.R. Simplot Company to deliver top performing potato varieties through hybrid breeding.
  • Puma Biotechnology defends European patent licensed from Wyeth covering Neratinib and Vinorelbine in opposition proceedingsJones Day represents Puma Biotechnology, Inc. in European opposition proceedings initiated by Mylan to defend a patent licensed from Wyeth covering Neratinib and Vinorelbine.
  • Idenix enforces patent against Gilead in Germany over sofosbuvirJones Day represents Idenix Pharmaceuticals LLC (a subsidiary of Merck & Co., Inc.) in patent litigation against Gilead in Landgericht Düsseldorf in Germany over sofosbuvir, the active ingredient in Sovaldi® and Harvoni®, Gilead's blockbuster drugs for treating Hepatitis C.
  • Celgene appeals decision from Opposition Division to revoke lenalidimide European patentJones Day represents Celgene Corporation in the appeal of a decision in opposition proceedings against two generic companies opposing a Celgene European patent covering the polymorphs of lenalidimide.
  • Astellas Pharma sells German over-the-counter (OTC) portfolio to Santo Holding (Deutschland) GmbHJones Day advised Astellas Pharma in the sale of its German over-the-counter (OTC) portfolio to Santo Holding (Deutschland) GmbH.
  • Genomatica establishes global patent portfolios related to production of more sustainable versions of major chemicals, made from alternative feedstocksJones Day represents Genomatica in the development of a worldwide patent portfolio related to methods of producing high-volume basic and intermediate chemicals from alternative feedstocks, such as sugars and cellulosic biomass, using engineered microorganisms.
  • Mount Sinai School of Medicine enforces patent on key biotech pharmaceutical productJones Day represented Mount Sinai School of Medicine of New York University in a multinational cross-jurisdictional patent infringement litigation against a global pharmaceutical company.
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    January 2019 Jones Day Publications

    Second Medical Use Patents in Europe: Are UK and Germany Swapping Approaches?

    June 2015 Alerts

    The EPO's Undisclosed Disclaimers Trap—A Possible Way Out

    December 2013 Alerts

    One for All or One for One: More than One Supplementary Protection Certificate for One Basic Patent?

    July 2012 Alerts

    A Therapy for European Patent Term Extensions: The Neurim Case and Supplementary Protection Certificates for "New Therapeutic Applications" reprinted by Law360

    Speaking Engagements

    • July 15, 2013
      Europe's New Unitary Patent and Unfied Patent Court: Supplementary Protection Certificates Under the New System
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