Alexander H. Spiegler
Alex has extensive experience with the US Patent & Trademark Office, specializing in patent prosecution and post-grant proceedings (e.g., inter partes reviews), in a wide variety of technologies, including biotechnology, agricultural technology, and pharmaceuticals. Alex also provides advice on claim construction, infringement, and validity issues in litigation. Alex has been recognized by Legal 500 as a leading lawyer in Patent Prosecution.
Recent matters include:
- Prepare and prosecute patent applications for US and international companies in the biotechnology, agricultural, pharmaceutical, and chemical arts, including inventions related to plants, herbicides, fertilizers, nucleic acids, proteins, antibodies, diagnostics, methods of treatment, and chemical processes.
- Conduct due diligence, freedom-to-operate, validity and patentability analyses in the biotechnology, agricultural, chemical and pharmaceutical arts, and prepare formal legal opinions reflecting conclusions of such analyses. Served as IP opinion counsel to pharmaceutical company in IPO.
- Represented agricultural company in inter partes review involving herbicidal compositions. Successfully obtained Final Written Decision for Patent Owner confirming all challenged claims are patentable.
- Represented lawn care company in litigation and patent office proceedings. Successfully obtained summary judgment on competitor’s trade secret claim. Obtained favorable Markman ruling against competitors’ patents, leading to dismissal of the patent infringement suit. Successfully provoked inter partes reviews and reexaminations against competitors’ patents, and obtained final decisions that competitors’ patents are unpatentable.
- Represented inventor against reexamination of patent directed to methods for treating achondroplasia. Reexamination Certificate confirmed patentability of all original claims.
- Represented agricultural biotechnology company against reexamination of patent directed to methods of treating genetically modified plant with an herbicide. Reexamination Certificate issued with claims covering commercially important subject matter.
- Represented life sciences company with patents covering DNA sequencing technology. Obtained favorable Markman ruling.
- Represented life sciences company in patent office proceedings (interferences and reexaminations) relating to nucleic acid technology (e.g., sequencing, amplification).
- Represented pharmaceutical company in a Hatch-Waxman litigation brought against it by owner of patents covering leading attention hyperactivity disorder drug.
Alex was an associate at an international law firm prior to joining Arent Fox. From 2000 to 2004, he was a Biotechnology Patent Examiner at the US Patent and Trademark Office.
Publications, Presentations & Recognitions
- Co-author, Chemical and Life Sciences Year in Review, 2017
- Co-author, Chemical and Life Sciences Year in Review, 2016
- Co-author, "3 Reasons Why Supreme Court Should Grant Cert in Critical Biotech Case," April 26, 2016
- Co-author, Pharmaceutical, Chemical and Biotech Year in Review, 2015
- Co-author, Thinking Twice About “Comprising,” AIPLA’s Biotech Buzz, June 2015
- Co-author, Inter Partes Review Year in Review, 2014
- Co-author, Pharmaceutical, Chemical and Biotech Year in Review, 2014
- Co-author, Pharmaceutical, Chemical and Biotech Year in Review, 2013
- Co-author, “Patent Reform Stalled by Tech and Pharma/Biotech Debate,” Daily Business Review (2010)
- Co-author, “Recent Trends in Patent Practice: The Federal Circuit’s Treatment of Pharmaceuticals,” BNA Life Sciences Law & Industry (2007)
- “Latest Trends in US Patent Law Affecting the Life Sciences Industry,” Flanders Institute for Biotechnology, Gent, Belgium (2017)
“Intellectual Property in the United States,” organized by StartingBloch, Nimes, France (2017)
- “Intellectual Property in the United States,” organized by StartingBloch, Montpellier, France (2016)
- “Intellectual Property in the United States,” organized by Biomeridies and StartingBloch, Nimes, France (2015)
- “Subject Matter Eligibility of Biotech and Pharmaceutical Inventions,” organized by Biomeridies and StartingBloch, Clapiers, France (2015)
- “Recent Developments in the Patent Office and Courts Affecting Life Sciences and Computer Patents in the United States,” Flanders Institute for Biotechnology U.S. Patent Seminar, Gent, Belgium (2014)
- “Developments in Biotechnology, Chemical and Pharmaceutical Law,” CLE Seminar, New York, NY (2012)
- “Legislative and Judicial Developments Affecting Patenting of Biotech Inventions in the United States,” DeClerq & Partners IP Seminar, Sint-Martens-Latem, Belgium (2011)