Dr Carl A. Morales > Dechert LLP > New York, United States > Lawyer Profile

Dechert LLP
Three Bryant Park, 1095 Avenue of the Americas
NEW YORK, NY 10036-6797
United States
Carl A. Morales photo

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.

Memberships

  • 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

Lawyer Rankings

United States > Industry focus > Healthcare: life sciences

(Next Generation Partners)

Carl MoralesDechert LLP

Dechert LLP is active across all areas of the life sciences market, leveraging a strong corporate team advising on capital markets transactions, M&A and commercialization deals. The team is recognized for its strengths in finance and its experience assisting pharmaceutical companies with fundraising for Covid-19 treatments. Of recent note, the team represented a US-based financial services client in BioNTech’s $325m Series B financing round—one of the single largest private funding rounds for a biotech company in European history. Los Angeles-based Kimberly Branscome and Jay Bhimani joined from Kirkland & Ellis LLP, strengthening the product liability and mass torts practice. Co-chairs Andrea Reid and David Rosenthal are based in Boston and New York, respectively; product liability co-chair Mark Cheffo, patent litigator Katherine Helm and patent prosecutor Carl Morales are contacts in New York.

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

Dechert LLP packs a punch in the life sciences sector. Headed by Andrea Reid in Boston and Jeffrey Plies in Austin, the practice focuses on biotechnology and pharmaceutical clients, ranging from start-ups all the way to listed multinationals. The team comes highly recommended, with its clear sector focus and its well-rounded practice that also includes high-stakes and complex licensing work as well as disputes brought before the USPTO. It is integrated into the firm’s international life sciences and patent group and is, therefore, well versed in matters with multi-jurisdictional aspects. Pharmaceutical expert and patent attorney Carl Morales is based in the New York office.