Joanne M. Holland PhD

Technical Advisor, Boston

Biography

Overview

Dr. Joanne M. Holland is a Senior Patent Agent in the Global Intellectual Property Practice Group. Joanne's practice includes working with clients in the biotechnology, chemical and pharmaceutical industries on a wide range of intellectual property issues, including patent portfolio development and life cycle management, patent prosecution, and freedom-to-operate. She works with clients to create and carry out global patent strategies incorporating analysis of the existing patent landscape.

Joanne also has extensive experience performing analyses for advising clients in connection with transactions, such as mergers and acquisitions, licenses, and venture financings, assisting clients in evaluating the intellectual property portfolios of target companies and conducting worldwide due diligence assessments. She has conducted numerous assessments related to patentability, validity, non-infringement, freedom-to-use, and Orange Book listing and delisting matters and has advised clients in connection with reissue and patent term extension applications. Joanne has also been involved in post-grant matters, such as inter partes review and complex interference proceedings.

Joanne obtained her Ph.D. in Organic Chemistry from the University of Pennsylvania. While there, she focused on the application of tandem Diels-Alder methodology to the preparation of the cyclopropyl taxane skeleton as well as the design and synthesis of novel epothilone analogs in the laboratory of Professor Jeffrey Winkler. Following graduate school, Joanne worked as a medicinal chemist in the drug discovery groups at Sepracor and Beyond Genomics where she concentrated on programs directed at the treatment of CNS-mediated diseases.

Prior to joining White & Case, Joanne worked as a Patent Agent at an international law firm in Boston.

Bars and Courts
US Patent and Trademark Office
Education
PhD
Synthetic Organic Chemistry
University of Pennsylvania
BA
Chemistry
Bowdoin College
Languages
English
*Not admitted to practice law in any jurisdiction

Experience

Represents a pharmaceutical company in conducting worldwide pre-litigation assessments of their patent portfolios covering therapeutic products in clinical trials.

Represents a pharmaceutical company prosecuting a multi-faceted patent portfolio in the U.S. and around the world covering a clinical candidate.

Represents a pharmaceutical company in preparing and filing reissue and patent term extension applications for Orange Book listed patents.

Represents multiple pharmaceutical and biotechnology companies in the preparation and worldwide prosecution of patent applications.

Performed IP diligence to support a multi-billion dollar transaction involving the acquisition of a publicly-traded company in the diabetes space.*

 

*Matters prior to joining White & Case.