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Dechert LLP

1095 AVENUE OF THE AMERICAS, NEW YORK, NY 10036-6797, USA
Tel:
Work +1 212 698 3500
Fax:
Fax +1 212 698 3599
Email:
Web:
www.dechert.com

Dr Carl A. Morales

Tel:
Work +1 212 641 5601
Email:
Dechert LLP

Work Department

Intellectual Property

Career

Carl A. Morales, Ph.D. is a registered patent attorney in the Patent Counseling and Prosecution practice of Dechert’s Intellectual Property group. Dr. Morales applies his scientific and legal training toward acquiring, protecting, and managing patent rights for clients in the biotechnology, chemistry, pharmaceutical, and medical device industries.

Dr. Morales has particular expertise in developing and prosecuting patent portfolios for FDA-approved or soon-to-be approved drug products, including for products involved or expected to be involved in litigation.  He also devises and executes strategies to secure second and third generation patent coverage that extends pharmaceutical product exclusivity (e.g., formulation, dosing regimens, and impurity profiles).

Dr. Morales has prepared and prosecuted patent applications in the U.S. Patent and Trademark Office and numerous foreign patent offices. His practice also includes pre-litigation case assessments; preparing patentability, validity, infringement, and enforcement opinions; and due diligence evaluations. Dr. Morales is experienced in post-grant patent proceedings when product-critical patents are at stake, such as reissues, reexaminations, and European oppositions. Dr. Morales has also prepared numerous patent term adjustment petitions and patent term extension applications and conducted Orange Book listing investigations.

Member

  • American Bar Association
  • American Intellectual Property Law Association
  • New York State Bar Association
  • American Chemical Society

Education

  • Carnegie Mellon University, B.S., Chemistry, Economics and Business, 1998, Highest Honors, Phi Beta Kappa, Mellon Scholarship in Science, NASA Undergraduate Research Fellowship
  • Carnegie Mellon University, M.S., Physical Organic Chemistry, 1999
  • Harvard University, A.M., Organic Chemistry, 2001, Hoffman-La Roche Fellowship in Organic Chemistry, GEM Graduate Fellowship
  • Harvard University, Ph.D., Synthetic Organic Chemistry, 2004, National Science Foundation Pre-Doctoral Fellow, The Christensen Prize for Outstanding Research Achievement, Derek C. Bok Award for Excellence in Teaching
  • New York University, J.D., 2009, Intellectual Property Law Scholar


United States: Industry focus

Healthcare: life sciences

Within: Healthcare: life sciences

The ‘highly creative’ practice at Dechert LLP is co-headed by Andrea L C Reid in Boston and David S Rosenthal in New York, who focus on IP and corporate work respectively. Reid advised clinical-stage biopharmaceutical company PureTech Health on IP-related aspects of its deal with Hoffman-La Roche to advance its milk-derived exosome platform technology for the oral administration of Roche’s antisense oligonucleotide platform. Rosenthal has assisted Egalet with an asset purchase agreement to acquire four FDA-approved, non-narcotic pain products from Iroko. Product liability litigators Sheila Birnbaum and Mark Cheffo, who joined the New York office from Quinn Emanuel Urquhart & Sullivan, LLP in July 2018, have been acting for Purdue in over 1,400 cases related to its prescription opioid pain medications. Patent specialist Chad Davis from Goodwin is another recent arrival in Boston. The ‘incredible’ Carl Morales in New York, who is experienced in developing and prosecuting patent portfolios for FDA-approved or soon-to-be approved drug products, is also recommended.

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