Gordon

Dana M. Gordon, Ph.D.

Partner
Registered Patent Attorney
Boston

I help clients design and implement worldwide patent strategies, and I understand our clients’ science as well as their CSOs.

Counseling on securing and leveraging intellectual property assets, Dana Gordon advises leading universities, pharmaceutical and drug discovery companies, and medical device companies on strategic aspects of patent and trade secret protection, e.g., for development candidates, clinical assets, and proprietary confidential research tools.

Dana’s practice emphasizes patent portfolio strategic planning, and preparation and prosecution of U.S., international and foreign patent applications in the life sciences, including applications focused on small molecules, pharmaceuticals, synthetic methods, molecular diversity, drug discovery, polymers, materials science, and medical devices. He frequently provides clients with due diligence assessments of U.S., international, and foreign patent portfolios in connection with technology transactions and acquisitions. Dana also regularly prepares non-infringement, invalidity and clearance patent opinions in these and other areas.

Reflecting his doctorate in organic chemistry, and his postgraduate chemistry fellowship at Harvard University, Dana has a substantial record of technical accomplishments in the life sciences.

Dana was previously Deputy Chair of Foley Hoag’s Intellectual Property Group.

Education

  • Boston College Law School, J.D.
  • Harvard University, NIH Postdoctoral Fellow in Chemistry with Professor George M. Whitesides
  • Yale University, Ph.D. in Organic Chemistry with Professor Samuel J. Danishefsky
  • University of California Los Angeles, B.S. in Chemistry, magna cum laude with Departmental Highest Honors

Bar and Court Admissions

BAR ADMISSIONS
  • Massachusetts
  • U.S. Patent & Trademark Office (Agency)

Experience

  • Devised and implemented worldwide patent strategy for ORLADEYO® (berotralstat)
  • Obtained a U.S. patent in the metabolic disease area triggering a $2 million milestone payment for the licensor
  • Provided an invalidity patent opinion in connection with strategic alliances
  • Longstanding management of organic chemistry-related patent portfolios for New England, Midwestern and southeastern research universities

PROFESSIONAL EXPERIENCE
  • Assistant Professor (tenure track) in the Chemistry Department at Brandeis University (1994-1997)

Publications

  • "Proof of Purpose: The US Utility Requirement," EUROPEAN BIOPHARMACEUTICAL REVIEW, 32-33 (Spring 2006)
  • "United States: Upjohn v. Mova Pharmaceutical," PATENT WORLD 128, 18-20 (December 2000/January 2001)
  • Co-author on at least a dozen publications in well-known peer-reviewed scientific journals, including the Journal of the American Chemical Society, the Journal of Organic Chemistry, Tetrahedron, and Tetrahedron Letters

Honors & Involvement

HONORS
  • Managing Intellectual Property -- IP Star Nationally and for Massachusetts (2013-2022)
  • IAM Patent 1000 – Recommended Patent Attorney for Massachusetts (2012-2022)
  • Ranked in Intellectual Property by CHAMBERS USA: AMERICA'S LEADING LAWYERS FOR BUSINESS (2008-2016)
  • Listed as a “Rising Star” in Intellectual Property Law, Super Lawyers'  Massachusetts Rising Stars: A Comprehensive Listing of the Best Young Lawyers in Massachusetts (2005-2012)
  • National Institutes of Health Postdoctoral Fellow (Harvard, 1992-1994)
  • National Science Foundation Predoctoral Fellowship (Yale, 1988-1991)
  • Awarded the 1986 Geissman Prize for Excellence in Organic Chemistry by the Department of Chemistry at UCLA
INVOLVEMENT
  • American Association for the Advancement of Science, Member
  • American Bar Association, Member
  • American Chemical Society, Member
  • American Intellectual Property Law Association, Member
  • Association of University Technology Managers, Member
  • Boston Bar Association, Member
  • Boston Patent Law Association, Member
  • Intellectual Property Owners Association
  • Licensing Executives Society (LES), Member
  • Massachusetts Bar Association, Member
  • Worcester Comprehensive Education & Care, Board of Directors
  • Perkins School for the Blind, Member of the Corporation
  • Boston Bar Foundation, Fellow

Speaking Engagements

  • Moderator, "Is Open Innovation the Savior of the Biopharmaceutical Productivity Crisis?," BioNetwork 2013 (October 2013)
  • Panelist, "IP in the CleanTech Sector", part of the Clean Energy Fellowship Program sponsored by New England Clean Energy Council (July 2009)
  • Panelist, Venture Capital & IP/Tech Transfer, Harvard Medical School (April 2007)
  • Panelist, Law School for the CFO, Emerging Enterprise Center (April 2007)
  • Moderator, RNAi: Talking Out Loud About Gene Silencing, 5th Annual Mass. High Tech BioForum (February 2007)