Overview

Pat Carson is a partner in Kirkland's New York Office. She has established a reputation as a top litigator in the life sciences field. While she focuses her practice on patent litigation including jury and bench trials, Pat also has extensive experience counseling clients on patenting strategy, patenting evaluation and IP due diligence relating to transactions, including licensing, joint ventures and acquisitions. She has represented clients in the pharmaceutical, biotechnology, chemical, medical device, consumer health care, consumer electronics and semiconductor fields. Pat has been recognized in The National Law Journal's "Defense Hot List" feature and by Intellectual Asset Management (IAM) Life Sciences 250The World's Leading Life Sciences Lawyers. In 2013 - 2014, Pat was honored in Managing Intellectual Property’s IP Stars - Top 250 Women in IP, she was also selected as a "Life Science Star" by LMG Life Sciences. She has also been consistently named among the "World's Leading Patent Practitioners" by IAM Magazine and was listed as "Recognized Practitioner" in the 2015 - 2016 editions of Chambers USA.

Pat recently led the trial team in Regeneron v. Merus, prevailing on behalf of her client Merus on all counterclaims including non-infringement, invalidity and inequitable conduct. In a landmark victory benefiting not only her client Wyeth, but hundreds of similarly situated patent-holders, Pat successfully challenged the U.S. Patent and Trademark Office's interpretation of a statute designed to compensate patent holders for loss of patent term due to delays in processing applications. The victory resulted in significant patent term being added to the patents at issue in that case and to patents assigned to countless other companies as well. Pat recently acted as lead counsel for Pfizer in Pfizer v. Watson, and successfully defended the company against Watson's attempt to launch a generic version of Rapamune®, a drug used to prevent organ rejection in transplant patients.

Pat has a scientific background and experience as a patent examiner. She holds a Ph.D. in microbiology and immunology from Temple University School of Medicine. She devoted several years to postdoctoral studies at the Medical College of Virginia and the National Institutes of Health. She also spent several years in the U.S. Patent and Trademark Office as a patent examiner in the biotechnology group.

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Thought Leadership

Publications

Pat's recent publications include the following:

"Implications of inter partes review proceedings on biotech/pharma litigation," Pharmaceutical Patent Analyst, Vol. 8, No. 3, pp. 65-70, June 2019

“CRISPR patents: guidance from US courts,” co-authored with Mira Atanassova Mulvaney, published by Life Sciences IP Review, 2018

Chapter 19: “Witnesses” in Evidence in Patent Cases, co-authored with Thomas Fleming, published by Bloomberg Law Book Division, 2018

"Biomedical Patents: The Quest for Balance," co-authored with Mira Atanassova Mulvaney, published by Life Sciences IP Review, August 2016

"Pre-ANDA Litigation: Strategies and Tactics for Developing a Drug Product and Patent Portfolio," co-authored Chapter 7: Investigational New Drug (IND) and New Drug Applications (NDA) with Dan Forchheimer and Howard S. Suh, published by ABA Book Publishing, 2014

"Post-Therasense inequitable conduct: a pharmaceutical perspective." Pharmaceutical Patent Analyst, Vol. 2, No. 4, pp. 467-79, July 2013

"Trial Strategies in the Era of the Troll," Corporate Counsel, September 7, 2010

Written Description, Chapter in Pharmaceutical and Biotech Patent Law, published by the Practising Law Institute, 2008

Seminars

Pat also speaks frequently on topics of interest to the life sciences industry. Her most recent seminars include the following:

"Assessing the Impact of New PTO Procedures Under the AIA on Paragraph IV Litigation," American Conference Institute (ACI) Paragraph IV Disputes, May 2013

"IP Overview for Drugs and Biologics: Hatch-Waxman, BPCIA," FDA Boot Camp, ACI March 2013

Panelist: "The U.S. District Court and ITC Judicial Perspectives," USPTO Post-Grant Patent Trials Practicing Law Institute (PLI) March 2013

Speaker: annual American Conference Institute's conference on "Maximizing Pharmaceutical Patent Life Cycles;" most recently a speaker in October 2012 on "Inequitable Conduct Post-Therasenseand How it Impacts Life Cycle Planning"

Credentials

Admissions & Qualifications

  • New York
  • New Jersey

Education

  • Fordham University School of LawJ.D.
  • Temple University School of MedicinePh.D.
    NIH Fellow
  • Rutgers UniversityB.S.