John R. Van Amsterdam, PhD
(he/him/his)
Shareholder
| Biotechnology
Overview
John Van Amsterdam has over 25 years’ experience in worldwide intellectual property practice.
John takes the time to understand clients’ business to ensure that clients obtain meaningful intellectual property protection that suits their business needs. John has particular proficiency in designing and implementing strategies to obtain strong and strategic patent protection, developing portfolios for clinical products, and evaluating and developing strategies to remove obstacles to freedom to operate. He enjoys developing long-term relationships with clients to provide stable, effective representation, and has represented several clients for over 20 years.
John advises clients in essentially all areas of patent practice, including patent prosecution; counseling; portfolio development and management; post-grant proceedings including inter partes review and reexamination; patent term adjustment and extension; interferences; due diligence for investment and acquisition; patent landscape studies; freedom-to-operate, infringement and validity opinions; and agreements.
John's experience extends to all areas of biotechnology, medical, and pharmaceutical technologies. He has particular understanding of antibody technologies and synthetic biology including gene circuits for controlling expression, protein, DNA and RNA biotherapeutics production, metabolic engineering of microorganisms, cell therapies, vaccines, gene editing technologies, immune system modulation, and diagnostics.
John represents clients from all over the world, including large and mid-size pharmaceutical corporations, innovative biopharmaceutical and biotech companies, start-ups, and cutting-edge academic institutions. He also contributes to several new business and innovation programs at MIT, including for the last several years as a mock board member for teams in the MIT delta v Accelerator, and as a subject matter expert on intellectual property for the Martin Trust Center. He previously served as a mentor and as a judge for the MIT $100K Entrepreneurship Competition and as a screener for the Lemelson-MIT National Collegiate Student Prize Competition.
Prior to joining Wolf Greenfield, John was a Postdoctoral Fellow at the Bristol-Myers Squibb Pharmaceutical Research Institute in Princeton, NJ.
Experience
- For a biopharmaceutical client concerned its main competitor was going to obtain a patent that could block a key drug candidate, pursued a strategy to obtain claims based on older application that pre-dated competitor’s application, resulting in client obtaining a patent with claims that established a position blocking competitor from obtaining broad claims.
- To maximize patent term for a client’s licensed drug candidate, developed a strategy using multiple applications to provide flexibility in maximizing both Patent Term Adjustment and Patent Term Extension, resulting in several issued patents.
- For a client seeking the most appropriate candidates for developing biosimilar drugs, conducted clearance studies, eliminating some as candidates based on patent landscape, thereby saving client money and resources otherwise used to develop the biosimilars.
- For a client with possible freedom to operate issues based on competitor’s patents, evaluated strategies for eliminating blocking patents, then determined that inter partes reviews would be best and most cost-effective option to provide freedom to operate.
- For a pharmaceutical client in a crowded technology area, pursued and obtained allowed claims on its next pipeline drug, raising company share price.
- For client concerned its Japanese corporate partner would not renew its partnership, possibly leading to reduced share price, traveled to meet with and convince partner of patents’ value, resulting in partnership renewal worth several hundred million dollars to client.
- For a client that had a contentious relationship with a competitor that owned blocking patents, prosecuted several interferences—including successful appeal to the Federal Circuit—which resulted in destroying all competitor’s patents while leaving client’s intact.
Activities
- Boston Intellectual Property Law Association
- MIT delta v Accelerator – Mock Board Member
- Frequent speaker at the annual Comparative Patent Practice Conference, Tokyo
- Lemelson-MIT Student Prize - Screener
- MIT $100K Competition - Judge and Mentor
- MIT Clean Energy Prize Competition - Mentor
John was a founding member of the firm’s Diversity Committee and was chair or co-chair of the firm’s Biotechnology Practice for 10 years.
Recognition
- Repeatedly named to The Best Lawyers in America®
- Ranked among the Top 50 Most Active Attorneys in Biotech Patent Prosecution by Patexia, Inc.
- Winner of Lexology's Client Choice Awards 2018, Intellectual Property – Patents for Massachusetts
- Recognized for excellent client care and quality of service by the 2018 Client Choice Awards