John is a registered patent attorney with more than 30 years of experience analyzing intricate legal issues from a cutting edge perspective in procuring and enforcing intellectual property rights in the chemical, life sciences and biotechnology industries. Start-ups and established companies alike rely on John to understand their business objectives when designing strategies to achieve market exclusivity and freedom to operate.
Representative technologies include CRISPR genome engineering, single cell whole genome analysis, genomically recoded organisms, genetically modified plants and seeds, gene drives, chromosome painting, fluorescence in situ sequencing, recombineering, spatial sequencing of nucleic acids within cells, read/write DNA-based information storage devices, small molecule therapeutics, probiotic formulations, two-part polymerizable tissue sealants, polymerizable membranes, implantable/wearable drug delivery devices, picosecond lasers and their use, laser induced spectroscopy and analytical instrumentation, hydrogel technology, inverse emulsions, thickeners, oil and gas recovery, and inks.
John is the rare combination of a patent litigator and patent prosecutor. Possessing both skill sets, John brings a perspective unique in the industry to obtaining and enforcing patents. John works hand-in-hand with clients to develop and manage pragmatic patent portfolios and to advise clients on the patent portfolios of others when making licensing or investment decisions. Recognizing that a patent can be both a sword and a shield, John has both enforced patents and defended allegations of patent infringement in federal court.
A conference organizer and presenter in China, John has lectured to Chinese scientists, business executives, representatives of SIPO and students in Beijing, Shenzhen and Shanghai on issues of United States patent law practice and procedure. John is also a member of the American Chemical Society.
John has been recognized as a LMG Life Sciences Star for 2012-2020, and a New England/Massachusetts Super Lawyer for 2004-2018. He has also been listed as an Intellectual Asset Management Patent 1000 “World’s Leading Practitioner” and Managing Intellectual Property “IP Star” for 2013-2021.
A frequent lecturer, teacher and author on intellectual property, John’s recent speaking engagements and publications are below:
Speaker at MDG Boston (Medical Device Group) meeting: Protecting your Medical Device Invention in China, April 6, 2016.
Speaker on Licensing and IP at Integra LifeSciences in-house counsel offsite retreat, October 14, 2015.
Panelist and Speaker at American Conference Institute Life Science Patents Conference 2015, New York on “Statutory Subject Matter under Section 101," January 14, 2015.
Speaker at World IP Forum 2015, New Delhi, India on “USPTO Guidance on Statutory Subject Matter," January 10-12, 2015.
Speaker, Gene Patenting Pre- and Post-Myriad, Haut Conseil des Biotechnologies, Paris, France, April 29, 2014.
Speaker, Obviousness Post Myriad and Prometheus: A Practical Approach to Prosecution, IP Leadership Forum, New Delhi, India, January 9, 2014.
Speaker, Protecting protein and peptide related inventions, PepCon-2013, Suzhou, China, March 21, 2013.
Speaker, Demystifying the Current Obviousness Standard and Its Implications for Biotech Patenting, American Conference Institute’s Biotech Patents Conference, Boston, MA, November 29, 2012.
Speaker, Protein and Peptide Related Inventions, PepCon-2012, Beijing, China, March 25, 2012.
Speaker, The America Invents Act, Pharma IPR Conference, Mubai, India, February 1, 2012.
Speaker, Preparing for a Radical Overhaul of the U.S. Patent System: The Impact of Reform on Biotech Patent Strategies, American Conference Institute's Biotech Patents Conference in Boston, December 1, 2011.
Speaker, Patenting Your Medicinal Chemistry Invention, Chinese National Medicinal Chemistry Symposium, Guangzhou, China, November 20, 2011.
Speaker, Patenting of Antibodies, American Conference Institute’s Biotech Patents Conference, Boston, MA, December 1, 2010.
Speaker, Patenting of Antibodies, American Conference Institute’s Biotech Patents Conference, Boston, MA, November 30, 2010.
Speaker, IP Basics, Zhongguancun Haidian Science Park Beijing, Beijing China, September 10, 2010.
Speaker, US Patent Practice, The Patent Information Annual Conference of China (PIAC China), hosted by the State Intellectual Property Office, Beijing China, September 9, 2010.
Speaker, Safe Harbor Provision of 35 USC sec. 271(e)(1), American Conference Institute's Hatch-Waxman Bootcamp in Boston July 19-20, 2010.
Speaker, "IP Issues Relating to Therapeutic Oligonucleotides and Peptides,” IBC LifeSciences TIDES Conference, Boston, MA, April 28, 2010.
Hosts a Roundtable Discussion, "The Practical Aspect of Patents as Strategic Business Tools," Cambridge Healthtech Institute's 9th Annual Peptide and Protein Conference, San Diego, CA, January 12, 2010.
Speaker, “Maximizing Your Global Patent Strategy,” 5th International Conference on Corporate Intellectual Property Strategy, Zhengzhou, Henan Province of China, October 28-30, 2009.
Guest Lecturer, “Making Medicine,” Harvard University, Cambridge, MA, June 22, 2009.
Speaker, “Freedom to Operate and Injunctions under US Law,” Unitalen Law Firm, Beijing, China, June 5, 2009.
Keynote Speaker, “Global Patent Strategies,” International Symposium on Drug Discovery and Intellectual Property, Suzhou, China, June 2, 2009.
Short Course Lecturer, “Intellectual Property as it Relates to Antibodies”, Cambridge Healthtech Institute’s 5th Annual PEGS Protein Engineering Summit, Boston, MA, April 5, 2009.
Chair and speaker, "Biotechnology and Technology Transfer," BIT Life Sciences 3rd Annual Protein and Peptide Conference, Beijing, China, March 23, 2009.
Short Course Lecturer, “Intellectual Property as It Relates to Peptides and Proteins ad Therapeutics and Diagnostics”, Cambridge Healthtech Institute’s Peptide and Protein Week, San Diego, CA January 11, 2009.
Keynote Speaker, Beijing International Workshop on Drug Design and IP Protection in Beijing, China, October 23-24, 2008.
Speaker and Chair, BIT’s 5th Annual International Conference on Drug Design Science and Technology in Beijing, China, October 18-22, 2008.
Speaker, “We’ve Got Patents. How Can We Be Sued”?, BIT’s 1st Annual Protein and Peptide Conference in Shenzhen, China, April 22-24, 2008.
Speaker, “Avoiding IP Surprises”; Cambridge Healthtech Institutes 14th Annual Molecular Medicine Tri-Conference in San Francisco March 25, 2008.
Speaker, Protein and Peptide Patent Law, Cambridge Healthtech Institute’s Peptide and Protein Week, San Diego, CA January 12, 2008.
Speaker, “US Pharmaceutical Patent Law”, State Intellectual Property Office of the People's Republic of China pharmaceutical conference in Beijing October 17-19, 2007.
Speaker, “Freedom to Operate: Analysis and Opinions for Pharma and Biotech Patents, Pharma/Biootech Patent Boot Camp, American Conference Institute, San Francisco, September 18-19, 2007.
Speaker, Protecting Start-Up Intellectual Property; CELLutions Summit, Cambridge Healthtech Institute, Boston MA, August 20, 2007.
Speaker, Written Description and Enablement in Biotechnology related cases: Current Developments in Federal Circuit Caselaw, American Conference Institute, Palo Alto, California, April 18-19, 2007.
Speaker, “Intellectual Property Issues for Emerging Technology Companies”; Cambridge Healthtech Institutes 13th Annual Molecular Medicine Tri-Conference in San Francisco February 27, 2007.
Speaker, “Nanotechnology”, South Shore Science Center, January 27, 2007.
Speaker, “Peptide and biomarker related Inventions”; Cambridge Healthtech Institute's 6th Annual Peptide-Protein Information conference in San Diego January 9-12, 2007.
Speaker, “Corporate Counsel Seminar” in Chicago December 8, 2006.
Speaker, “Current trends in drafting pharmaceutical patent applications” for American Conference Institute's 7th Advanced Forum on Biotech Patents in Boston November 29-30, 2006.
Speaker, “Protecting You Pharmaceutical Inventions”, State Intellectual Property Office of the People's Republic of China pharmaceutical conference in Beijing November 1-3, 2006.
Speaker and Course Organizer; Cambridge Healthtech Institutes's Second Annual Executives on Target pharmaceutical conference in Boston October 24-25, 2006. Short course on Protecting Your Pharmaceutical Inventions. Speaker on litigation issues involving pharmaceutical inventions.
Speaker, “Patents as Business Tools”; Cambridge Healthtech Institutes' Partnerships & Technology conference, August 17, 2006 in Boston.
Speaker, “Building Foundations for Screening Technologies, Therapeutics and Regenerative Medicine”: Cambridge Healthtech Institutes' Science of Stem Cell Research conference, August 14, 2006 in Boston.
Speaker, “Patenting Peptides and Peptide-Related Inventions”, CHI’s Annual Peptide Conference, San Diego, January 2006 Speaker, “Overview of the Patent Application Process”, Harvard University, 2003.
Speaker, “The Present Status of Gene Patenting”, National Human Genome Research Institute, 2002.
Speaker, “Gene Patenting”, University of Maryland School of Law, 2002 Speaker, “Patenting Plastics”, Society of Plastic Engineers, 2001.
Articles and Publications
"The Attack on Patentable Subject Matter Continues: Organic Seed v. Monsanto Pushes Utility to the Limit"; BNA's Patent, Trademark & Copyright Journal, May 2011
"The Attack on Patentable Subject Matter: ACLU v. Myriad Genetics as a Harbinger of Things to Come"; BNA's Patent, Trademark & Copyright Jounal, August 2010
"Oral Argument Sheds Light in Bilski v. Kappos," Genetic Engineering & Biotechnology News, December 2009
“Tips on How to Properly Construe Patent Claims”; Genetic Engineering & Biotechnology News, December 2008
“Biotechnology & Pharmaceutical Sector Special Report”; Financier Worldwide, February 2007
“International Efforts Are Achieving Credible IP Enforcement Even Amid Chronic Abuse”, Intellectual Property & Technology Law Journal, March 2006
“Stemming the Tide of Counterfeits Abroad”, National Law Journal, December 2005
“Brazil’s Agreement with Abbott: A New Perspective on Patent Prosecution as a Business Process”, Intellectual Property & Technology Law Journal, December 2005
Zhongguancun Haidian Science Park Beijing, Beijing China, September 10, 2010
1984, B.S., Chemistry
University of California, Irvine
1986, M.S., Physical Chemistry
Suffolk Law School
- U.S. Circuit Court of Appeals for the District of Columbia Circuit
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the First Circuit
- U.S. District Court for the District of Massachusetts
- U.S. Supreme Court