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Mayer Brown

Work +1 312 782 0600
Fax +1 312 701 7711

Joseph Mahoney

Work +1 312 701 8979
Mayer Brown

Work Department

Litigation and Dispute Resolution


Joe Mahoney concentrates on patent matters relating to pharmaceuticals, biotechnology, chemicals and medical devices. His training in pharmacy (Doctor of Pharmacy) gives him a unique understanding of scientific and technical issues, bolstering his extensive legal experience. His patent litigation and counseling practice includes representing clients in Hatch-Waxman Act and other patent litigation; post-grant proceedings at the Patent Trial and Appeal Board (PTAB); biosimilars; rendering opinions relating to the infringement, validity, and enforceability of patents; and negotiating and drafting patent licenses, co-marketing and joint venture agreements for a variety of products. He also has substantial experience in trademark, trade dress and trade secret litigation and counseling. Joe has been recognized by Chambers USA (2008-11) and Legal 500 (2008-11) as "first-rate all the way," and a "good strategist," who "clients approve [for] his 'creative approach and sound reasoning.'" He has been recognized in IAM Life Sciences 250 - The World's Leading Life Sciences Patent Litigators 2010 as one who "combines deep technical knowledge with patent litigation skills." He also is listed in IAM Patent 1000 (2013), IAM Patent (2012), IAM Patent Litigation 250 (2011) and Best Lawyers’ 2012 Annual Guide to IP Law. In addition, Joe leads IP due diligence assessments relating to acquisitions and mergers involving complex patent portfolios and pending litigation, including inventor and witness interviews; assesses title, encumbrances, extensions of FDA and patent exclusivities throughout the product lifecycle based on improvements, new formulations, new strengths or indications, improved pharmacokinetic profiles, dosage form dissolution profiles, or new salt, enantiomeric, or polymorphic forms; prepares timelines and scenario planning to align the business, clinical/regulatory, and patent objectives and likely outcomes; and provides strategic advice regarding Orange Book listings, patent term extensions, post-grant reviews, reissues, reexaminations, interferences, and oppositions. Joe has argued before the Patent Trial and Appeal Board, and has conducted portfolio management and patent prosecution relating to a variety of pharmaceutical, medical device, chemical, and biotechnological inventions, including blood cell isolation, labeling and imaging, food enzymes, gastrointestinal drugs, DNA and peptide sequences, antibodies, chemotherapeutic agents, cancer diagnostics, nanoparticles, antimicrobials, vaccines, opioid analgesics, hormone therapy, antiemetics, antihypertensives, antidepressants, drug delivery systems (e.g., topical gels, transdermal patches, controlled and delayed-release oral dosage forms, inhalers, intranasal administration), immunoassays, needleless injectors, stents, and grafts (drug-coated and uncoated).


Saint Louis University School of Law, JD, cum laude 1993 Editor-in-Chief, Saint Louis University Law Journal University of Nebraska Medical Center 1988 Doctor of Pharmacy (Pharm D)

United States: Industry focus

Healthcare: life sciences

Within: Healthcare: life sciences

Mayer Brown’s ‘service level and attention is extremely high’. The practice is jointly led by New York-based corporate lawyer Reb Wheeler, whose team has ‘the full range of skills for the sector’, and IP specialists James Ferguson and Joseph Mahoney in the Chicago office. Highlights include assisting the manufacturer of opioid overdose treatment Narcan Adapt Pharma with its sale to Emergent BioSolutions. Gilead and Medtronic are also clients. Patent litigator Lisa Ferri in New York is another key contact.

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