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Paul Berman's experience encompassed patent and trade secret litigation, complex technology transfers and patent prosecution, and strategic intellectual property counseling.  Mr. Berman focused on information technologies for a wide range of enterprises including financial institutions, and Hatch-Waxman matters for life sciences enterprises.  He serves on the Committee for Intellectual Property of the Massachusetts Institute of Technology.

  • Represented JPMorgan Chase in patent litigations involving computerized marketing systems and electronic check processing.
  • Represented Merck-Medco in patent litigation concerning pharmaceutical benefits processing systems.
  • Represented OPNET Technologies in patent and trade secret litigation concerning graphical user interfaces for network analysis software.
  • Represented Schering-Plough in Hatch-Waxman patent litigation concerning potassium chloride supplements.
  • Represented Auxilium Pharmaceuticals in Hatch-Waxman patent litigation concerning testosterone gel products.
  • Provided strategic guidance on patent and trade secret issues in litigations involving technologies such as pharmaceuticals, digital image processing, electrodeless lighting, mail processing systems, and digital subscriber line telecommunications.
  • Conducted and supervised intellectual property due diligence for transactions involving patents and trade secrets involving, for example, medical devices, drug small molecules, recombinant DNA, telecommunications, computer-telephone interfaces.
  • Negotiated technology transfer and development transactions involving start-ups, multinationals and universities for patent and trade secret rights to drug and biologic products, computer applications, product recycling systems, and financial systems and products.
  • Advised pharmaceutical companies on Hatch-Waxman aspects of the Federal Food, Drug, and Cosmetic Act and the Patent Code, including FDA Orange Book patent listings and patent term restoration applications.
  • Prepared and prosecuted patent applications for a wide range of technologies, including financial and insurance products, telecommunications, information technologies, pharmaceuticals, dietary supplements, and methods of using drugs.

Pro Bono

  • Represented Mother Assisted Nutritive Aid and Children’s Investment Fund Foundation on issues pertaining to patents held by Nutriset directed to ready-to-use-food products used to treat malnutrition in children.
  • Legal 500 US, Patent Litigation - Full Coverage (2016) 
  • Legal 500 US, Intellectual Property - Patent Prosecution (2012-2013)
  • PLC Cross Border IP in Business Transactions Handbook (2008-2009)
  • Recognized in PLC - Life Sciences, Which Lawyer? for Intellectual Property (2005-2010) and Patent Litigation (2011-2012)