Current Employment Position(s)

Partner

Lawyer Overview

Dr. Jacqueline Benn's intellectual property practice is focused on the biotechnology and pharmaceutical industries and involves obtaining and evaluating intellectual property protection and strategic counseling of clients. She has extensive experience with patent issues relating to biologics (such as vaccines, viral vectors, antibodies, and growth factors) as well as pharmaceuticals (such as therapeutics for the treatment of cancer, diabetes, and pain), nutraceuticals, and drug delivery technologies.

Jacqueline advises a wide range of clients, including start-ups, mid-cap, and multinational biotechnology and pharmaceutical companies. Her practice involves the strategic creation and management of patent portfolios, with a particular focus on drug delivery and product-driven portfolios. Her client counseling activities include due diligence evaluations of patent portfolios; evaluation, analysis, and opinions on the patentability of inventions; validity of patents and freedom-to-operate or clearance opinions; and involvement in licensing strategies, negotiations, and agreements. She has also participated extensively in opposition proceedings before the European Patent Office and has been involved with and participated in patent litigations.

A substantial part of Jacqueline's practice involves evaluating patent portfolios and conducting due diligence for a variety of clients, including pharmaceutical companies as well as investment banking firms looking to invest, as well as conduct mergers and acquisitions in the pharmaceutical and biotechnology areas.

Jacqueline worked with the biotechnology group at Pennie & Edmonds from 1995 through 2003, during which time she attended law school.

Jacqueline's doctorate thesis was on the molecular biology of the hepatitis B virus (HBV) and the role of HBV protein X in promoting carcinogenesis. She has also authored several scientific articles on the same subject.

Areas of Practice

• Intellectual Property
• Life Sciences
• Pharmaceuticals

Representative Cases

• Herbalife International, Inc. v. Unither Pharma, Inc., Case No. CO3-5878 (JW) and CO3-5090 (JW) (N.D. Cal. 2004)
• King Pharmaceuticals Research & Development, Inc. v. Item Development AB, Interference No. 105,620
• Acquisition of BiPar Sciences , (2009)
• Joint Venture with Lexicon Pharmaceuticals
• Joint Venture with OXiGENE
• Patent Prosecution
• Patent Prosecution and Defense
• Patent Prosecution and Portfolio
• Patent Prosecution and Portfolio
• Patent Prosecution and Portfolio Management

West Practice Categories

Copyrights, Intellectual Property Law, International Intellectual Property, Patents, Technology Licensing, Trade Dress, Trade Secrets, Trademarks

Bar Admissions

• New York

Education

• Fordham University

Address

222 East 41st Street
New York, NY 10017-6702

Phones

1.212.326.3821 (Business Phone)

Faxes

1.212.755.7306 (Business Fax)

Emails

Contact Us (Business Email)

Websites

http://www.jonesday.com