JohnPodtetenieff Ph.D.

Associate

Munich + 49.89.20.60.42.200

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John Podtetenieff handles patent prosecution and contentious matters on behalf of biotechnology, pharmaceutical, and chemistry sector clients.

John has experience in the full spectrum of patent proceedings before the European Patent Office — including drafting, prosecution, opposition, and appeal — as well as national infringement and invalidity proceedings. He has assisted diverse clients ranging from small start-ups in need of basic IP advice to multinational pharmaceutical companies requiring advice on their freedom-to-operate and litigation matters.

Prior to practicing intellectual property law, John was a research scientist working in the fields of metagenomic drug discovery, biocatalysis, directed evolution, and protein engineering, with particular emphasis on developing efficient green catalysts yielding enantiomerically pure molecules. He is a member of the Chartered Institute of Patent Attorneys and the European Patent Institute.

Experience

  • Akebia successfully challenges European patentJones Day represented Akebia Therapeutics, Inc. in successfully challenging the validity of European Patent No. EP1463823 issued to FibroGen, Inc. in opposition proceedings before the European Patent Office ("EPO").
  • Turnstone Biologics develops patent portfolios for its oncolytic virus clinical candidateJones Day is representing Turnstone Biologics Corp. in the development of patent portfolios covering its oncolytic virus programs.
  • Astellas and Agensys prosecute patent portfolios for novel monoclonal antibody and antibody-drug conjugate immunotherapeutics useful for certain cancer treatmentsJones Day represents Astellas Pharma Inc. and its subsidiary Agensys, Inc. in prosecuting their worldwide patent portfolios related to novel monoclonal antibody and antibody-drug conjugate (ADC) immunotherapeutics for use in the treatment of a variety of cancer indications, including PADCEV®, an ADC approved by the FDA in 2019 for the treatment of metastatic bladder cancer.
  • ToolGen defends multi-party opposition at EPO relating to CRISPR/Cas9 gene editing technologyJones Day is acting for ToolGen, Inc. in defense of a multi-party opposition filed at the European Patent Office against its patent rights covering application of the revolutionary CRISPR/Cas9 gene editing technology in biotechnology, medicine, and agriculture.
  • AbbVie successfully faces off with Amgen in patent interference involving buffer-free antibody formulationsJones Day represented AbbVie, Inc. in a patent interference against Amgen, Inc. before the PTAB involving the parties' applications/patents generally related to buffer-free antibody formulations, including formulations to adalimumab, marketed as HUMIRA®.
  • ToolGen seeks patent protection for CRISPR technologyJones Day is prosecuting patent applications and developing a patent portfolio on behalf of ToolGen, Inc. for CRISPR technology.
  • 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.
  • Celgene defends patents covering lenalidomide and apremilast before European Patent OfficeJones Day represents Celgene Corporation in defense of patents covering lenalidomide and apremilast against oppositions brought before the European Patent Office by generic pharmaceutical companies.
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    May 2020 Alert

    A Dynamic Reversal by the EPO's Enlarged Board of Appeal

    July 2017 Commentary

    Clarifying or Conforming? The EPO Bows to the European Commission

    December 2016 Alert

    Clarifying or Confusing? The European Commission Chews on Tomatoes and Broccoli

    June 2016 Alert

    EPO Announces Streamlined Opposition Proceedings

    June 2015 Commentary

    Clarifying or Confirming the Extent of Process Exclusion under Art. 53(b) EPC?

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