Alexander H. Spiegler

Client Work

Recent matters include:

• Prepare and prosecute patent applications for start-up, mid-sized, and large US and international companies in the biotechnology, agricultural, pharmaceutical, and chemical fields, including inventions related to genetically modified plants, active pharmaceutical ingredients, gene editing, pharmaceutical and agricultural formulations, immunotherapy, plant varieties, microorganisms, diagnostics, methods of treatment, and chemical processes.

• Served as IP opinion counsel to pharmaceutical companies for initial public and secondary stock offerings.

• Conduct due diligence, freedom-to-operate, validity and patentability analyses in the chemical and life sciences industries, and prepare formal legal opinions reflecting conclusions of such analyses.

• 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.

Previous Work

Alex was an associate at an international law firm prior to joining ArentFox Schiff. From 2000 to 2004, he was a Biotechnology Patent Examiner at the US Patent and Trademark Office.

Publications, Presentations & Recognitions

Recent publications:

• Co-author, “Three Ways the New USPTO Guidance for Patent Eligibility Can Benefit Patent Applicants,” Intellectual Property & Technology Law Journal, 2019
• 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) 

Recent presentations:

• “The Importance of Intellectual Property for Growing Your Life Science Company,” BioMed Alliance Conference, Montpellier, France (2019)
• “US Case Law Update,” CIPA Annual Life Sciences Conference, Brighton, England (2019)
• “Developing a Coherent Patent and Trade Secret Strategy – Easier Said Than Done!” Water & Wastewater Equipment Manufacturers Association’s Annual Meeting, Phoenix, AZ (2019)
• “European Union protection of trade secrets - comparison with the United States,” IBA’s 7th Annual World Life Sciences Conference, Philadelphia, PA (2019)
• “Top Ten Intellectual Property Regulatory Issues for Biotechnology Startups,” Yeshiva University’s Katz School of Science and Health, New York, NY (2019)
• “Benefits of US Patent Examiner Interviews,” New York, NY (2019)
• “The Importance of Patenting Life Sciences and Food-Related Inventions in the United States: A Historical and Current Perspective,” Amsterdam, Netherlands (2019)
• “Patent Ownership and Salaried Inventors: French-US Perspective,” Paris, France (2019)
• “Gene editing and CRISPR Cas9,” IBA’s 6th Annual World Life Sciences Conference, Boston, MA. (2018)
• “Intellectual Property, Regulation and Compliance for Biotechnology,” guest lecturer in Yeshiva University’s Katz Graduate Business School course (2018)
• “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)