Carl Morales > Goodwin > New York, United States > Lawyer Profile

Goodwin
THE NEW YORK TIMES BUILDING
620 EIGHTH AVENUE
NEW YORK NY 10018
NEW YORK
United States
Carl Morales photo

Position

Partner

Career

A partner in Goodwin’s Life Sciences group and Intellectual Property practice, Carl 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.

Carl has particular expertise in developing and prosecuting complex patent portfolios for small molecule drug products, including for products involved or expected to be involved in patent litigation. He 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). Carl also routinely conducts due diligence on life science patent portfolios for a variety of transactions, including licensing deals, acquisitions, investments and royalty purchases.

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

Education

PhD, Synthetic Organic Chemistry, Harvard University / JD, New York University School of Law / MS, Physical Organic Chemistry, Carnegie Mellon University / AM Organic Chemistry, Harvard University / BS, Chemistry, Economics and Business, Carnegie Mellon University

Lawyer Rankings

United States > Healthcare > Life sciences

(Next Generation Partners)

Carl Morales – Goodwin

Goodwin’s global practice advises biotech, pharma, and healthcare companies, along with life science venture capital and investment firms. The growing practice supports clients in matters as wide-ranging as regulatory compliance, IP and M&A. The team’s representation of Prime Medicine in its $3.5bn deal with Bristol Myers Squibb evidences its excellence in research collaboration and license agreement matters. The practice is headed by Kingsley Taft, vastly experienced in commercial, financing and capital market transactions, and Mitchell Bloom, who specializes in emerging companies and life sciences investors. Both in Boston, transactional lawyer Robert Puopolo and Marishka DeToy, who focuses on capital markets and corporate matters, are key figures in the practice. In DC, Steven Tjoe focuses on product development strategies and FDA regulatory counseling. Arriving on the Boston-based team from Cooley LLP are Joshua Rottner, venture capital and growth equity funds specialist, and Michael McGrail, focused on medical devices and life sciences. Other key hires include litigation expert Michael Siekman, arriving in Boston from McDermott Will & Emery LLP, M&A specialist Amanda Gill, from Paul, Weiss, Rifkind, Wharton & Garrison LLP, and IP lawyer Carl Morales, from Fenwick & West LLP; the latter two are based in New York.

United States > Intellectual property > Patents: prosecution (including re-examination and post-grant proceedings)

Goodwin‘s group has a strong reputation for its patent prosecution work in the life sciences and tech sectors in particular. The team is also equipped to assist across pharma, medical devices, and tech among other sectors, advising on patent matters covering clearance, patentability, infringement, and validity, among other areas. The team is helmed by Boston-based Catherine McCarty and James Riley, who works from Silicon Valley. A life sciences expert with a specialism in drug development, Theresa Kavanaugh is a key name in Boston. Carl Morales joined the New York office from Fenwick & West LLP in January 2025.