Life Sciences

Chair(s)

Overview

AP&S helps life sciences companies protect core technology, structure licensing and collaboration transactions, and move innovations from discovery toward commercialization.

We prepare and prosecute life sciences patents with the transaction in mind – drafting and managing portfolios so they can withstand diligence, support exclusivity, and create leverage in licensing, financing, collaboration, and acquisition discussions.

Our Life Sciences Practice Group combines PhD-level scientific training, registered patent attorney experience, sophisticated intellectual property counseling, licensing and strategic transaction experience, brand protection, and practical business judgment. The team includes very experienced attorneys with in-house pharmaceutical and biomedical experience, university teaching experience, and prior practice experience at nationally recognized law firms, Boston-based life sciences and intellectual property practices, and premier intellectual property boutiques. That background allows AP&S to deliver sophisticated patent prosecution, IP strategy, licensing, diligence, brand protection, and commercialization counsel through a practical, senior-driven New England platform.

We represent biotechnology, pharmaceutical, diagnostics, medical device, digital health, research institution, university spinout, investor, and private-equity portfolio company clients, including life sciences startups emerging from Rhode Island universities. AP&S also serves hospitals, health care organizations, colleges, universities, publicly traded and privately held companies, nonprofits and other innovation-driven clients from offices across New England and beyond.

Representative Highlights

• $1.5B+ collaboration agreement for a publicly traded NASDAQ genomics company with a Fortune 500 pharmaceutical company.
• $125M+ exclusive licensing agreement for a privately held regenerative medicine company with a Fortune 500 pharmaceutical company, including $15M upon signing.
• $125M specialty pharmaceutical acquisition by a publicly traded NASDAQ pharmaceutical company, plus milestones.
• $82.5M NASDAQ IPO for a molecular diagnostics company, representing the underwriters.
• Multi-year, worldwide Distribution Agreement for a privately-held biomedical diagnostic company with a Fortune 500 healthcare company.
• Private-equity portfolio company representation in the life sciences sector.
• Startup and university spinout representation for life sciences companies emerging from Rhode Island universities.
• Intellectual property, transactional, and commercialization support of a privately-held specialty pharmaceutical company for VIGAFYDE, a ready-to-use vigabatrin oral solution for infantile spasms resulting in an acquisition by a premier international contract development and manufacturing organization (CDMO).
• Representative patent and published application experience across biotechnology, pharmaceuticals, diagnostics, medical tools and devices, digital healthcare, and neurosciences.

Why AP&S for Life Sciences IP + Transactions

• Senior attention and practical execution: clients work directly with attorneys who understand the science, the IP, the transaction, and the business objective.
• National-caliber experience, senior-level attention: members of our team have practiced in nationally recognized life sciences, intellectual property and corporate law platforms before joining AP&S, giving clients sophisticated experience in a more accessible, practical and cost-conscious environment.
• PhD-level and technical fluency across neuroscience, biotechnology, pharmaceuticals, diagnostics, medical devices and related platform technologies.
• Patent prosecution plus deal judgment: AP&S connects patent strategy, diligence, licensing, collaborations, M&A, financing, branding, and commercialization.
• Rhode Island and Southern New England ecosystem position: AP&S supports local innovators, university spinouts, research hospitals, RI BIO, and the regional startup community.
• Cost-conscious options for emerging companies: where appropriate, AP&S can explore fixed-fee, staged-fee and deferred-fee approaches for early-stage companies and ecosystem initiatives.
• Full-service New England platform: life sciences clients can access corporate, M&A, tax, employment, litigation, health care, regulatory-adjacent, privacy and other AP&S capabilities.
• Regional access with broader reach: AP&S is a New England-based firm with offices in Providence, Newport, Boston, Manchester, and New York and relationships that help clients coordinate counsel for national and international matters.

Who We Serve

• Life sciences startups and founders
• University and hospital spinouts, including companies emerging from Rhode Island universities
• Research institutions and technology-transfer offices
• Private-equity portfolio companies in the life sciences sector
• Investors, strategic partners, acquirers, licensors, and licensees
• Pharmaceutical, biotechnology, diagnostics, medtech, digital health, and AI-enabled health companies
• Companies preparing for financing, collaboration, strategic partnership, licensing, acquisition or commercialization milestones

Patent Prosecution and Licensing Strategy for Life Sciences Companies

• Patent drafting and prosecution for biotech, pharma, diagnostics, med devices, medtech, digital health, and neuroscience technologies.
• Continuation and portfolio strategy aligned with financing, collaboration, licensing, and exit milestones.
• Patentability, validity, non-infringement, freedom-to-operate, and competitive landscape reviews.
• License, option, sponsored research, collaboration, material transfer, clinical trial, manufacturing, supply, services, and distribution agreements.
• IP diligence for investors, acquirers, licensors, licensees, strategic partners, and private-equity sponsors.
• University technology-transfer agreements, sponsored research arrangements, and spinout IP ownership structures.

How We Help

Patent Prosecution and Portfolio Strategy

• Patent preparation and prosecution in the United States and abroad.
• Portfolio architecture for biotechnology, pharmaceutical, diagnostics, medtech, digital health, and platform technologies.
• Patentability, validity, non-infringement, and freedom-to-operate assessments.
• Competitive landscape, design-around, exclusivity, and continuation strategy analysis.
• Trade secret protection programs and alternative pharmaceutical product protection.
• IP ownership, chain-of-title, and invention assignment counseling.
• Post-grant, enforcement, litigation, and dispute counseling.

Licensing, Collaborations and Strategic Alliances

• In-bound and out-bound license agreements, option agreements, and strategic collaboration agreements.
• Sponsored research agreements, university technology-transfer agreements, and cooperative research and development agreements.
• Joint development, material transfer, clinical trial, manufacturing, supply, services, and distribution agreements.
• Consulting, confidentiality, and restrictive covenant agreements.
• Transaction structures designed to preserve optionality and reduce risk for emerging companies negotiating with larger strategic partners.

Transactions, Financings and Exit Readiness

• Company formation, governance, and founder arrangements.
• IP assignments, consultant agreements, employee invention agreements, and advisor agreements.
• Private equity, institutional debt, venture and strategic financing support.
• Mergers, acquisitions, asset purchases, divestitures, and royalty monetization transactions.
• Diligence for investors, acquirers, companies, private-equity sponsors, and strategic partners.
• Commercialization planning and exit-readiness assessments.

AI-Enabled Patent Strategy and Transaction Risk

AI is changing the speed and breadth of patent diligence, but the differentiator remains legal judgment, technical fluency, and commercial analysis.

We help clients and investors interpret AI-driven patent analytics in light of claim scope, written description, enablement, prosecution history, competitive design-around paths, freedom-to-operate, reimbursement assumptions, commercial exclusivity, and transaction objectives.

Life Sciences Brand Protection

• Brand clearance, trademark prosecution, and global portfolio management.
• Product-name strategy, enforcement, coexistence, licensing, and anti-counterfeiting counseling.
• Brand diligence in financing, licensing, M&A, and commercialization transactions.

Emerging Company and Ecosystem Support

• Strategic counseling for founders, university spinouts, incubator companies, and research-stage ventures.
• Programming and strategic collaboration support for life sciences ecosystem organizations.
• Creative fee structures for emerging companies where appropriate, including fixed-fee, staged-fee, and deferred-fee models.
• Practical sequencing of legal spend around milestones such as provisional filings, FTO screens, university licenses, seed financing, Series A diligence, strategic collaborations, product branding, and exit readiness.

Rhode Island and Southern New England Life Sciences Ecosystem

AP&S is committed to supporting the growth of the life sciences ecosystem in Rhode Island and Southern New England. Our attorneys have hosted and participated in programming for life sciences startups and work with companies, investors, universities, research hospitals, and ecosystem organizations across the region.

The team is positioned to support initiatives involving the Rhode Island Life Science Hub, RI BIO, universities, research hospitals, incubators, investors, and strategic partners through programming, education, strategic collaborations, IP counseling, commercialization planning, and flexible fee structures where appropriate.

Industries and Technologies

Our experience includes work across the following life sciences sectors and technologies:

• Biotechnology
• Pharmaceuticals
• Diagnostics and molecular diagnostics
• Medical devices and medical tools
• Digital health and healthcare AI
• Drug delivery and drug discovery tools
• Research tools
• Genomics and proteomics
• Neurosciences
• Immunology and vaccines
• Cancer therapeutics
• Gene therapy
• Cell therapy
• Regenerative medicine
• Stem cell and transgenic technologies
• Blood cells and blood products
• Tissue and organ regeneration
• Novel antibiotics and antiviral therapeutics
• Nanotechnologies
• Antioxidants
• Nutraceuticals and dietary supplement technologies
• Rare childhood diseases
• Orphan drugs

Representative patents/published applications related to biotechnology, pharmaceuticals, diagnostics, medical tools and devices, digital healthcare, and neurosciences can be viewed by clicking the appropriate button below:

Biotech   Pharma   Diagnostics

Med Tech   Digital Health   Neurosciences

 

Experience

Intellectual Property and Commercialization

• Michel “Mike Morency, Ph.D represents biotechnology and biopharmaceutical companies, universities, research organizations, and multinational businesses in life-sciences patent and intellectual-property matters.
• Daniel J. Holmander advises medical-device, diagnostics, digital-health, biomedical, research-hospital, and university clients on patent strategy, protection, and commercialization.
• Dean Phelps has years of pharmaceutical research and development and in-house patent experience involving therapeutic agents, formulations, FDA Orange Book issues, pharmaceuticals, drug delivery, drug discovery, analytical methods, and medical devices.
• Cheryl A. Clarkin advises pharmaceutical and life-sciences companies on branding, drug-name selection, trademark clearance and prosecution, FDA drug-name approval considerations, and related brand-protection matters.
• Alex Behrakis has patent, licensing, due-diligence, clearance, freedom-to-operate, and portfolio experience involving biomedical devices, implantable heart devices, stents, drug-eluting stents, and ablation systems.

Corporate, Mergers and Acquisitions, Venture Financing and Strategic Transactions

• Paul A. Campellone handles corporate, financing, licensing, technology development and transfer, startup formation, equity financing, supply/distribution, and mergers and acquisitions matters that may support life-sciences companies.
• Matthew E. Waters represented clients in medical-device sectors, including medical-device manufacturers, in corporate and transactional matters.
• David M. Webster represented clients in merger and acquisition transactions involving medical-device companies on both the buyer and seller side, including environmental due diligence and compliance review.
• Nickolas S. Arnold represented clients in transactions involving medical-device distributors.
• Kateryna Kingsbury handled acquisitions involving a medical-equipment manufacturer and a medical-imaging company.
• Christian F. Capizzo represented clients in merger and acquisition transactions involving medical device companies on both the buyer and seller side involving environmental due diligence and compliance review.
• Kristen R. Alberione
  • Spent more than 13 years in the tax department of Covidien plc and Medtronic plc, where she led tax matters for the companies’ manufacturing and commercial operations in Latin America and Canada, including transfer pricing, advance pricing agreements, tax audits, and the regional tax implementation of Covidien’s 2013 spin-off of Mallinckrodt, Medtronic’s approximately $50 billion acquisition of Covidien, and Medtronic’s $6.1 billion sale of its patient care and nutritional businesses to Cardinal Health.
  • Advises life sciences companies on federal, state, and international tax planning, including tax structuring and diligence for acquisitions, licensing, and cross-border manufacturing and distribution arrangements, and represents clients in tax controversies before the IRS, state taxing authorities, and the U.S. Tax Court.

Real Estate and Life-Sciences/Medical Device Facilities

• Jonathan M. Sachs represents a global life sciences investment and development company in Boston and brings relevant real estate, development, financing, and corporate experience for life-sciences facilities and investments.
• Christian S. Capizzo represented clients in the medical-device and life-sciences industry with environmental due diligence and compliance review associated with the purchase, sale, development, and leasing of real estate and facilities.

Litigation, Antitrust, Product Liability and Intellectual Property Litigation

• Nicole J. Benjamin
  • Defended a leading specialty pharmaceutical company in a pharmaceutical antitrust multidistrict litigation case against theories of “pay‑for‑delay,” patent fraud, and product hopping to block or delay generic competition, and served as one of four lead trial attorneys selected to try the 14 consolidated cases, which ultimately resolved after jury empanelment, on the eve of trial.
  • Represented a manufacturer of specialty ventilation devices in antitrust litigation before the United States District Court for the Western District of Texas, where false advertising, unfair competition, and a variety of other business torts were also at issue and negotiated a resolution before trial.
  • Represents pharmacy benefit managers in 31 antitrust cases assigned to a multidistrict litigation docket where plaintiffs allege that the defendants orchestrated a horizontal conspiracy to fix and suppress the rates of reimbursement paid to independent pharmacies for generic drugs.
  • Represents pharmacy benefit managers in federal court litigation in which the plaintiff alleges the defendants engaged in unfair and deceptive acts and practices in violation of Rhode Island’s Deceptive Trade Practices Act that harmed consumers and negatively impacted competition in the prescription drug and pharmacy market.
  • Represents the manufacturers of numerous pelvic, hernia, and breast mesh products in products liability litigation across New England, defending against strict liability, negligence, failure to warn, and warranty claims, and has been retained as both trial and appellate counsel.
  • Was retained as appellate counsel and handled post-trial motions, an emergency petition, and a subsequent appeal to the Rhode Island Supreme Court after a jury returned a verdict in a bellwether products liability case against a hernia mesh manufacturer.
  • Regularly advises a Swiss-American medical-device company specializing in respiratory care in a wide range of contract, commercial, and employment matters.
• Patricia K. Rocha defended a major international pharmaceutical manufacturer in a multijurisdictional criminal matter involving the marketing and distribution of human growth hormone.
• John A. Tarantino has extensive class-action and multidistrict-litigation experience involving pharmaceuticals, medical devices, product liability, and sophisticated scientific evidence.
• Geoffrey W. Millsom has relevant life-sciences and intellectual-property litigation experience, including a First Circuit victory in a life-sciences matter.
• Jeffrey K. Techentin and Daniel J. Procaccini have experience involving medical-device and dental-appliance manufacturers and related patent-infringement claims.

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