Halstead

David P. Halstead, Ph.D.

Partner
Co-Chair, Intellectual Property Department, Registered Patent Attorney
Boston

I work with life-science innovators to protect cutting-edge technology around the globe and to position IP for collaborations and commercialization.

David Halstead works with clients in the biotechnology, chemical, and pharmaceutical industries on a wide range of intellectual property issues. He assists clients with obtaining robust and enforceable patents and navigating the existing patent landscape.

Using his experience working with patents and applications in many foreign countries, David also helps clients devise effective global patent strategies designed to satisfy the idiosyncratic requirements of foreign patent offices.

David Halstead works with clients to create and manage their relationships with business partners. He evaluates the intellectual property portfolios of target companies to identify strengths, weaknesses, and opportunities to create value by revising patent strategies and addressing latent issues. Using his understanding of the regulatory environment for pharmaceutical and biotech products, David also advises clients regarding product life-cycle management, including Hatch-Waxman and Orange Book issues.

Before beginning his legal career, David obtained his Ph.D. in Organic Chemistry from Harvard University, where he studied the synthesis of complex organic molecules and completed the total synthesis of discodermolide in the laboratory of Professor David A. Evans.

Education

  • Harvard Law School, J.D., 2002
  • Harvard University, Ph.D. in Organic Chemistry, 1999
  • Pennsylvania State University, B.S. in Chemistry, summa cum laude, 1993

Bar and Court Admissions

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

Experience

  • Represented Proteolix, Inc. on intellectual property matters from their inception until their acquisition in 2009 by Onyx Pharmaceuticals for $276M in cash and up to $575M of additional performance-based payments. In addition to drafting and prosecuting the extensive, global patent portfolio that protected Proteolix’s key products, including the drug now known as carfilzomib (Kyprolis®), David also helped Proteolix navigate due diligence with various potential investors, partners, and acquirors.
  • Represents biotech companies on a variety of intellectual property matters, drafting and prosecuting a broad patent portfolio covering diverse biotech and pharmaceutical technologies, including successfully navigating European and Indian oppositions, managing relationships with collaborators, obtaining creative reach-through claims in both the US and Europe, and successfully defending these claims in a European opposition.
  • Represents global pharmaceutical companies, regularly advising them on business-critical issues from identifying and overcoming potential freedom-to-operate issues for biotech, pharmaceutical and consumer health product candidates to the handling of double-patenting issues with minimum impact on exclusivity expiration. In one exemplary project, David advised on the complex interplay of FDA labeling requirements, patent exhaustion, and inducement of patent infringement.
  • Represents publicly-held companies developing drug and nucleic acid delivery technologies, advising on strategies for navigating competitor patents while simultaneously structuring patent portfolios to maximize exclusive market space and gain leverage in potential licensing negotiations.
  • Represents investors in life science companies, helping them understand the patent portfolios that protect the value of their investments and analyze complex intellectual property disputes such as European oppositions & inter partes reviews.

Publications

Honors & Involvement

HONORS
  • Named Best Lawyers’ Boston Biotechnology Law Lawyer of the Year (2015)
  • Listed in The Best Lawyers in America, Biotechnology and Life Sciences Practice 
INVOLVEMENT 
  • Boston Bar Association
  • Massachusetts Bar Association
  • American Chemical Society
  • Boston Patent Law Association
  • Board of Directors, Boston Early Music Festival
  • President, Board of Trustees, Musica Sacra
  • Co-chair, Life Sciences Committee of the Boston Bar Association's Intellectual Property Section (2007-2009)

Speaking Engagements

  • Advanced Topics in Double Patenting: A Webinar for Patent Prosecutors and Litigators,” Foley Hoag webinar (December 3, 2014)
  • "Bioequivalence and the 'Same Active Ingredient' vis-à-vis Patentability," American Conference Institute's Hatch-Waxman Boot Camp (July 20, 2010)
  • "Beyond Business Methods: Assessing the Impact of Bilski on Life Sciences Inventions," Boston Bar Association (June 1, 2009)
  • Panelist, "Written Description Guidelines for Patents Revisited," Boston Bar Association and Boston Patent Law Association (September 30, 2008)
  • "Master Class on Drafting Successful Patent Applications for Biotechnology Related Inventions," ACI Biotech Patent Conference (September 17, 2008)