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Jorge Goldstein works in rarified air, but his first taste of legal practice was not so sweet. “I used to spend my days in the dungeons,” he recalls. “I was transferring in from a career in science to a career in law, and [I] had to work from the bottom.” Goldstein, a name partner at D.C.’s Sterne, Kessler, Goldstein & Fox, certainly put in his time on the bread and butter of patent practice. Over the last two decades, he has written hundreds of patent applications for companies large and small. But today, a long list of clients pay Goldstein, 56, for broad business advice. His counsel covers such diverse areas as obtaining patents from U.S. and foreign governments, giving strategic analysis to CEOs and venture capitalists, and serving as a “trusted adviser” to a multibillion-dollar company. Clients have included Biogen IDEC, BioSidus, Cytos Biotechnology, Human Genome Sciences, Mountain View Pharmaceuticals, Targepeutics, and Ventana Medical Systems. He has counseled in such areas as genomics, recombinant DNA technology, molecular biology, and immunology. “As the companies I represent have matured (and as have I) my role has adapted to their new situations in the marketplace,” writes Goldstein in an e-mail. Mark Saifer, vice president of Mountain View Pharmaceuticals, has found that what separates Goldstein from the competition is the way he envisions the whole process. Goldstein takes the offensive in patent procurement, says Saifer, which, in turn, makes for a better defense down the road. “If a patent looks strong to those who know the field, the infringer is less likely to break the patent,” says Saifer. “Drafting with an eye to the future really alters the way in which claims are written, and Jorge is very, very good at that work.” Clients also rave about Goldstein’s business savvy and acumen, describing the lawyer as an integral part of their management team. “The strength of my IP is the strength of my business. Without that, I would have nothing,” explains Sil Lutkewitte, president of Targepeutics. Goldstein recently helped the Pennsylvania-based biopharmaceutical company, whose main technologies treat cancers, resolve a patent dispute. Says Lutkewitte, “The expertise he brings to the table is huge to me.” According to Goldstein, his success is, in significant part, due to the fact that he was in the game when life sciences as a practice area was starting to gain ground. Having earned a Ph.D. from Harvard University in chemistry and a J.D. from George Washington University Law School, Goldstein joined Sterne, Kessler in 1983 just as the firm was founding its biotech practice. These days, Goldstein is overseeing a newly formed “inventorship dispute resolution” initiative at the firm and is busy with pro bono work. He represents the Working Group on Maca, a public-private Peruvian coalition battling U.S. patents that they say unfairly restrict their ability to export maca root, which grows in the Andes and has long been used by the people of Peru. The case, says the Argentina-born Goldstein, was a chance to tackle an interesting subject and to use his native Spanish. “There are not enough pro bono opportunities for IP lawyers,” writes Goldstein. “So this is a good one.”

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