Patrice P. Jean is Chair of Hughes Hubbard’s Life Sciences group. She has over a decade of experience counseling leading and startup pharmaceutical, chemical and biotechnology companies in all areas of intellectual property law. In particular, she is adept at asserting and defending the patent rights underlying the core technologies and innovations of leading high-tech and pharmaceutical companies. She also defends her clients against claims asserted by competitors, sparing them billions of dollars in damages. Additionally, her patent trademark prosecution practice strengthens her litigation abilities, allowing her to argue the validity of her clients’ IP while challenging the validity of third-party registrations. Patrice regularly calls on her technical background in biology to offer her clients an in-depth understanding of the complex science relative to each prosecution and litigation matter that she handles. This vantage point leaves her well-positioned to understand the complex science behind her clients’ innovations as well as the broader market implications. Prior to law school, Patrice earned her Ph.D. in molecular biology. She conducted research in various areas of biology and biochemistry including virology, oncology, kidney disease, X-ray crystallography and narcotics addiction. Her doctoral thesis is titled “Tissue, Strain, Gender and Age Variation in the Induction of p53 Activated Transcripts in Response to Cellular Stress.”
Professional Activities
President, New York Intellectual Property Law Association (2024 – 2025)
Vice President, New York Intellectual Property Law Education Foundation
Executive Committee member, William C. Conner Inn of Court
Board of Directors member, Relief Therapeutics (June 2021-April 2024)
Member, National Bar Association, Treasurer, Intellectual Property Section (2018-2019)
Leadership Council on Legal Diversity; 2014 fellow and past chair of the Working Group on Contribution Communications for the “All In” Campaign
Recognition
Named to Managing IP’s “IP Stars” list as a Patent Star, Trademark Star (2023, 2024)
Named to IAM Patent 1000’s “The World’s Leading Patent Professionals” list (2018-2024)
Named to Savoy Magazine’s “Most Influential Black Lawyers” list (2022, 2024)
Named HBCU Greatness’ 1st Annual Holiday Gala Sneaker Ball Honoree (2023)
Named to Profiles in Diversity Journal’s “Women Worth Watching” list (2020)
Previous Experience
Partner, Kenyon & Kenyon, 2012 – 2015
Highlighted Publications
“Patent Thicket Concerns Have Started Something Brewing at the Patent Office: Are Extensive Changes to Patent Practice on the Horizon?,” (January 2023)
"Skilled in the Art: A Reply to Senators’ ‘Thicket’ Concerns," Law.com (June 24, 2022)
"IP and COVID-19," Pharmaceutical Executive (March 11, 2021)
"Estate Planning for the Digital Afterlife," New York Law Journal (Nov. 10, 2016)
"Protecting Life Science Inventions in View of the USPTO's 'Guidance for Determining Subject Matter Eligibility of Claims Reciting or Involving Law of Nature, Natural Phenomena and Natural Products,'" Bloomberg BNA: Life Sciences Law & Industry Report (April 4, 2014)
"A Year of Changes for Life Sciences IP," Law360 (Dec. 18, 2013)
"Myriad: Practice Points and Considerations," Intellectual Property Today (Sept. 24, 2013)
"Patent Law: Biotechnology Update," American Bar Association (July 15, 2013)
"Protecting Self-Replicating Biotechnologies in View of Bowman v. Monsanto," Bloomberg BNA: Patent, Trademark & Copyright Journal (June 14, 2013)
"Myriad Ruling: Some Clarity, Some Uncertainty for Biotech," Law360 (June 14, 2013)
Highlighted Lectures
Panelist, “Advanced Licensing Agreements 2024,” Practising Law Institute (February 27, 2024)
Panelist, “Women in Financial Services Board Readiness,” (December 2023)
Panelist, “Advanced Licensing Agreements 2023,” Practising Law Institute (February 28, 2023)
Panelist, “Advanced Licensing Agreements 2022,” Practising Law Institute (March 1, 2022)
Panelist, “Strategies to Mitigate NPE Risk,” Black In-House Counsel Network (April 27, 2021)
Panelist, “Advanced Licensing Agreements 2021,” Practising Law Institute (March 2, 2021)
Panelist, “Perspectives on Diversity: Views on Trial Teams From the Bench, the Boardroom, and the Jury Box,” American Intellectual Property Law Association, (October 27, 2020)
Panelist, “Enforcement of Trade Secrets: The Practical Realities,” AIPPI World Congress (October 2020)
Panelist, “Advanced Licensing Agreements 2020,” Practising Law Institute (March 3, 2020)
Panelist, “Keeping Good Brands From Going Bad: Recent Developments in Brand Protection,” National Bar Association's Convention & Exhibits Conference (July-August 2018)
Speaker, “Digital Transformation: Powered by the Cloud Location,” National Bar Association Commercial Law Section's Corporate Counsel Conference (February 2018)
Court Admissions
U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Third Circuit
U.S. District Court for the District of Columbia
U.S. District Court for the Eastern District of New York
U.S. District Court for the Southern District of New York
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Southern District of Texas
Registered Patent Attorney: U.S. Patent and Trademark Office
Selected IP Litigations
Highlighted Matters
Cipla Ltd. v. Amgen (D. Del.): Represented Cipla in its patent litigation against Amgen in connection with Cipla's generic version of the prescription drug Sensipar. Achieved victory for Cipla and rejection of Amgen’s challenge
Alda Communications Trademark Litigation: Represented Alda Communications Training Company in its defeat of an international trademark application litigation challenge. Achieved victory for Alda Communications with the trademark petition from Aldi Inc. rejected
BASF Corp. v. SNF Holding Co. (D. Ga.): Represented SNF in the Federal Circuit’s ruling that the case had been filed in an improper venue and finding that a BASF patent was invalid and dismissed, in its entirety, a civil action for alleged patent infringement that BASF brought against SNF and several affiliates
454 Life Sciences Corp. v. Ion Torrent Inc. et al., No. 1:15-cv-00595-JPS (D. Del.): Counsel for the patent owner in an action concerning a process called "emulsion polymerase chain reaction" for simultaneously amplifying multiple nucleic acids in a single reaction tube
Teva Pharmaceuticals USA v. Sandoz and Teva Pharmaceuticals USA v. Mylan Pharmaceuticals et al. (S.D.N.Y.): Represented Teva in consolidated Hatch-Waxman litigations concerning proposed generic equivalents to Teva's blockbuster multiple sclerosis drug Copaxone®
Wyeth v. Intervet (D. Del.): Represented Intervet in patent infringement litigation concerning patents related to porcine circovirus vaccine technology. Achieved a favorable claim construction ruling
Intervet v. Merial Ltd. et al. (D.D.C.): Represented Intervet in patent litigation resulting in a favorable ruling including a summary judgment of noninfringement
Pfizer v. Teva Pharmaceuticals USA et al. (D.N.J.): Represented Teva against a multibillion-dollar damages claim in a case relating to Pfizer's epilepsy drug Neurontin® (gabapentin). Achieved a favorable ruling including a summary judgment ruling
Institut Pasteur v. Simon (E.D. Pa.): Represented Institut Pasteur and the Centre National de la Recherche Scientifique in patent litigation resulting in a favorable summary judgment ruling regarding ownership of a portfolio of 13 patents related to DNA "molecular combing" technology. The ruling confirmed that the world-renowned French research institutions are the rightful owners of the entire portfolio of patents
Other Matters
Representation of diversified biopharmaceutical company ANI Pharmaceuticals in its acquisition of global pharmaceutical company Alimera Sciences
Served as counsel in arbitrations representing Roche
Representation of Tao Group Hospitality in a deal to acquire Hakkasan Group, creating a premium hospitality powerhouse that includes a global portfolio of brands and properties
Representation of Turnitin, a leading provider of academic integrity and assessment solutions, in its acquisition of ExamSoft from private equity firm Spectrum Equity
Representation of Condé Nast in the sale of Golf Digest and Brides in two separate deals
Representation of Ascension Church in its planned sale of a Keith Haring mural described as the legendary street artist's “best kept secret”