The Legal 500

Twitter Logo Youtube Circle Icon LinkedIn Icon

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 ‘incredibleCarl 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.

[back to top]


Back to index

Legal Developments worldwide

Legal Developments and updates from the leading lawyers in each jurisdiction. To contribute, send an email request to
  • Bär & Karrer Advises Acushnet on the Acquisition of KJUS

    Acushnet Holdings Corp., the worldwide leader in the design, development, manufacture and distribution of golf equipment and wear, has announced the acquisition of KJUS, a Swiss-based ski and golf sportswear company.
  • AVELLUM advises on Ukraine`s first in over a decade Euro-denominated notes issue

    AVELLUM acted as the Ukrainian legal counsel to the Ministry of Finance of Ukraine on another milestone Eurobond deal. The issue by Ukraine of EUR1 billion notes with a 7-year tenor marks the first euro-denominated offering Ukraine has made in almost 15 years.
  • AVELLUM advises solar power plant developer on sale of solar project

    AVELLUM acted as the legal counsel to SM Invest Construction B.V., a solar PV plants developer, on the sale of shares in the holding company, which owns the underlying assets to develop a 148MW solar power plant in Mykolaiv region. Scatec Solar, a leading and globally acting solar energy producer, acted as the purchaser.
  • Bär & Karrer Advised Cembra Money Bank on the Financing of the Acquisition of cashgate

    Cembra Money Bank has agreed to acquire cashgate. The purchase price for the acquisition of cashgate and the refinancing of cashgate's loan portfolio is partly backed by a bridge facility and is financed and refinanced by the sale of treasury shares (gross proceeds of CHF 112.8 million) in an accelerated bookbuilding, the placement of CHF 150 million perpetual additional Tier 1 bonds and CHF 250 million net share settled convertible bonds.
  • Bär & Karrer Successfully Represents PNK Group Company in SCAI-Arbitration

    Bär & Karrer successfully represented a company acting under the trademark of PNK Group, a major developer of industrial facilities in Russia, against a Western European concrete plant engineering and manufacturing company in a SCAI-arbitration concerning the delivery of (defective) equipment. After full-fledged proceedings including a hearing with several technical experts, the client was awarded partial rescission of the contract (as requested) with returning of certain defective equipment against refund of its cost, a substantial price reduction with regard to the rest of the equipment, as well as a contractual penalty payment and reimbursement for 75% of all legal costs. Team members were Matthew Reiter and Désirée Schreyer (both arbitration).
  • What extra powers does a criminal prosecution provide in your area?

    The following article discusses session three in the IR Global Virtual Series on 'Freezing Assets - The mechanics behind cross-border injunctions'
  • If you are a UK business can you hire a student who has Tier 4 study Visa?

    Gulbenkian Andonian employs some of the top immigration lawyers in London and can be of valuable assistance if you are a company wanting to explore your options in hiring Tier 4 student visa holders.
  • Paper Applications for the EU Settlement Scheme

    The UK will leave the EU later this year at the end of October and preparations have started to take place on behalf of EU and EEA citizens to secure their immigration status in the UK before this happens.
  • Double Tax Treaty between Cyprus and Kazakhstan

    A DTT between Cyprus and Kazakhstan has been signed and ratified by Cyprus on the 15th of May 2019. The DTT is expected to “enter into force’ as from the 1st of January 2020, provided that the various legal procedures involved are finalized. Kazakhstan currently has the largest and strongest performing economy in Central Asia.
  • General requirements to advertising in Ukraine

    The main legal act regulating legal relations in the field of advertising is the Law of Ukraine  On Advertising . The implementation of the Law in practice requires a detailed analysis and practical experience. The fulfillment of the requirements of the Law and other regulatory legal acts regulating advertising relations in Ukraine is a guarantee that government agencies in Ukraine, such as the Antimonopoly Committee of Ukraine, the State Inspection of Consumer Protection of Ukraine will not be able to start an advertiser's check.