Significant expansion over the last two years has bolstered the already high-performing intellectual property department at Pepper Hamilton.
Since 2011, the 28-member transactional team guided major acquisitions, navigating complex intellectual property issues for Malvern, Pa.-based Vicept Therapeutics' acquisition by Allergan Inc. of Irvine, Calif., and the acquisition of NOX Technologies, also a Malvern-based company, by a subsidiary of Nu Skin Enterprises in a $12.5 million deal.
Building the transactional IP area was a strategy meant to complement Pepper's litigation and traditional corporate practice, said Raymond Miller, co-chair of the practice, who is based in Pittsburgh. Peter Wakiyama is the other co-chair, based in Philadelphia.
The firm had a very strong corporate practice and health practice, so building to transactional IP was a natural fit.
The practice handles a wide range of needs — trademark and service mark registration; negotiations for licensing transactions; preparing, filing and prosecuting patent applications — with a team of lawyers who have a wide breadth and significant depth of experience in IP law. Many also have advanced degrees in disciplines outside of the law.
Pepper selects new hires who fit into the firm's pragmatic and comprehensive approach to the law. The IP group has been heavily influenced by Pepper's strong corporate approach, Miller said.
The IP department, with more than 40 registered patent attorneys, patent agents and technical specialists, is informed by the backgrounds of its employees, which include telecommunications network systems, chemical engineering, mechanical engineering, computer software and microbiology.
The variety of academic degrees and technical backgrounds of group members means that Pepper's IP department is poised to help clients in a broad range of matters, like patent assessment, patent prosecution, trademark registrations, copyright registrations, technology transfer, IP portfolio management, due diligence investigations, IP audits, domestic IP protection, international IP protection and licensing.
With all of its familiarity with the IP landscape, Pepper is well situated to advise clients on bringing new products into the market, followed by the use of a unique tracking system to manage the flow of routine reports, filing due dates, office actions, annuities and maintenance fees. The system allows clients to accurately predict the expected fees and make sure that deadlines won't pass.
After that patent is granted, Pepper is there to protect it by conducting interference proceedings at the U.S. Patent and Trademark Office, analyzing various patent infringement and validity concerns, among other things.
Pepper is especially suited to pharmaceutical and biotechnology matters, with many of its lawyers and agents holding advanced degrees in molecular biology, biochemistry, biotechnology, organic chemistry, immunology, microbiology, vaccine technologies, diagnostics, genomics, proteomics and pharmacology.
The major product developed and manufactured by Vicept was a topical treatment to relieve a dermatological condition that affects more than 45 million people around the world. When Allergan acquired the company, it agreed to pay $75 million in cash up front and $200 million in payments contingent upon future developments.
The Pittsburgh team, led by Miller with N. Nicole Endejann and Aparna Nemlekar, developed Vicept's IP strategy and successfully prosecuted its patent portfolio, which was a major part of the transaction with Allergan.
That deal was the third major life-science transaction to be facilitated by the Pittsburgh team in less than a year.
All members of the team have degrees in the sciences.
A Pittsburgh-based team that included Miller, Endejann and Eric D. Kline, from the firm's corporate and securities practice group, also worked on a major deal between NOX Technologies, which developed certain anti-aging formulas involving enzymatic proteins, and a subsidiary of Nu Skin Enterprises, which holds an extensive anti-aging product portfolio.
The deal involved the acquisition of technology and patents and their integration into certain ageLOC skin-care products offered by Nu Skin, as well as the acquisition of some IP assets that Nu Skin may use in the future.
The addition of Kline to the IP team was a benefit for the deal, the firm said. Beyond the pharmaceutical and biotechnology fields, Pepper performs thorough due diligence of IP assets — looking into possible ownership of the assets, potential limitations on them and their patentability. On top of that, attorneys in the group do analysis in the due diligence phase to evaluate the likelihood of hurdles in the commercialization of a given product and examine the existing market. The firm undertakes an extensive search at the due diligence stage.
IP attorneys at Pepper often work closely with the firm's corporate lawyers on trademark due diligence aspects of mergers.
The attorneys are exacting with drafting, negotiating and making final the licensing transactions that are a large part of the firm's trademark practice.
Pepper also has broad reach, working both domestically and internationally. The practice tracks thousands of registered trademarks in a range of industries nationally and globally. The firm has registered marks in 90 countries and evaluates the markets in each country in which it manages portfolios. Pepper also navigates the unusual differences in various countries' procedures and laws for getting and protecting trademarks.
The addition of 33 carefully selected IP transactional and litigation attorneys over the last two years has only emphasized Pepper's well-established IP group. The firm has crafted its IP department with strong lawyers who have a personality that fits with Pepper's comprehensive approach, Miller said, explaining that the firm integrates various areas of law to serve clients' complex needs. He said Pepper's approach is pragmatic, managing IP rights with strategic counseling on a corporate bent.