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Alan J. Morrison
Partner
Areas of Expertise
  • Patent Prosecution
  • Licensing and Technology Transfer
  • Counseling on Patent Validity, Infringement, and Freedom to Operate


  • Professional Summary
    Mr. Morrison's intellectual property law practice has included all aspects of U.S. and international patent prosecution in the biotechnology and pharmaceutical fields. He has represented universities, research institutes and corporations in protecting groundbreaking inventions such as recombinant antibodies, catalytic nucleic acids, microarrays, targeted stem cell delivery methods and DNA sequencing techniques.

    Mr. Morrison also has prepared opinions and counseled clients on issues of patentability, inventorship, infringement and invalidity.

    During his years in private and corporate practice, he has prepared numerous biotechnology and pharmaceutical contracts such as licenses, joint development agreements, collaboration agreements, feasibility study agreements and technology transfer agreements, and has counseled clients regarding the negotiation of these contracts.

    Mr. Morrison has lectured extensively in the U.S., Europe, Asia and Africa on various topics of U.S. patent law.

    Education
    J.D., Yeshiva University, 1992
    M.Phil., Biochemistry and Molecular Biophysics, Columbia University, 1988
    M.S., Biological Chemistry, University of Michigan, 1986
    B.A., Biochemistry, U.C. Berkeley, 1984

    Admissions
    New York
    U.S. Patent and Trademark Office

    Memberships
    American Intellectual Property Law Association
    New York Intellectual Property Law Association
    American Bar Association

    Languages
    Chinese

    Selected Papers and Lectures
    Legal Hurdles and Strategies in Building a University Biotech Portfolio, presented as part of the panel on Building a Strong University Biotech Patent Portfolio, held at the 2008 Life Sciences Industry Summit, Long Island, New York, June 5, 2008 (Panel Chair and Lecturer).

    “Selected Topics in U.S. Biotech Patent Law” presented at the Workshop on Biotechnology Patent Law, hosted by Michalski Hüttermann and Partner, Düsseldorf, Germany, May 16, 2008 (Lecturer)

    “Biosimilars in the United States - a Brief Look at Where We Are and the Road Ahead” from Biotechnology Law Report - Expert Analysis of Current Developments

    Biosimilars in the United States: An Update, presented at Biosimilars 2007, organized by Visiongain, London, United Kingdom, December 6, 2007 (Lecturer)

    “Commentary: Supreme Court Update - KSR v. Teleflex and the Determination of Obviousness,” by Alfred Froebrich, Partner & Alan Morrison, Partner

    Understanding, Prosecuting and Enforcing Biotech and Pharmaceutical Patents in the United States, presented at the 2007 IP Workshop for Biotech Pharmaceutical Industry (Including Generic Drug Entry in the US), held under the auspices of the Center for Drug Evaluation, Taipei, Taiwan, April 2, 2007 (Lecturer)

    Trade Secret Protection: When and How It Should Be Used, presented at Effective Corporate IP Programs organized by Law Seminars International, Atlanta, Georgia, December 1, 2005 (Speaker and Co-Author)

    Double Patenting, presented at the Eighteenth Annual Pharmaceutical/Chemical Patent Practice Update sponsored by the New Jersey Intellectual Property Law Association, Committee on Chemical Practice, Iselin, New Jersey, December 9, 2004 (Speaker and Co-Author)

    U.S. Biotechnology and Pharmaceutical Law, an introductory lecture series presented as part of the Recovering Nations Project, and co-hosted by the Freetown law firm of Roberts & Partners, Freetown, Sierra Leone, November 22-24, 2004 (Co-Developer and Sole Lecturer)

    Non-Patent Protection for Biopharmaceuticals, presented at Biopharmaceuticals: Running the Race from Drug Discovery to Commercialization organized by Law Seminars International, Raleigh, North Carolina, May 3, 2004 (Speaker and Co-author)

    Determining Inventorship under United States Patent Law, presented at the Conference on Protection of Intellectual Property Rights sponsored by the Center for International Legal Studies, Kitzbühel, Austria, March 15, 2004 (Speaker and Author)

    Non-Patent Protection for Biotechnology and Pharmaceuticals, presented at Biotechnology from Start to Finish organized by Law Seminars International, San Diego, California, March 8, 2004 (Speaker and Co-Author)

    Claim Drafting Workshop: Chemical/Biotechnology, held as part of the American Intellectual Property Law Association's Patent Prosecution Training for New Lawyers, Washington, DC, August 15, 2003 (Workshop Co-Chair); August 24, 2002, August 17, 2001 and September 21, 2000 (Panelist and Instructor)

    Determining Inventorship, presented at the Sixteenth Annual Pharmaceutical/Chemical Patent Practice Update sponsored by the New Jersey Intellectual Property Law Association, Committee on Chemical Practice, Iselin, New Jersey, December 12, 2002 (Speaker and Co-Author)

    Intellectual Property Aspects of Mergers and Acquisitions, presented as part of a course on International Mergers and Acquisitions, New York University, July 31 and November 9, 2000 (Lecturer)

    An Overview of Pharmaceutical Patent Practice in the United States, presented at the Symposium on Intellectual Property and the Internationalization of Chinese Medicinal Products, Hong Kong Baptist University, Hong Kong, May 17-19, 1999 (Speaker and Author)

    Selected Topics in U.S. Pharmaceutical Patent Practice, hosted by the U.S.-China Intellectual Property Institute, Hong Kong Baptist University, Hong Kong, December 23, 1998 (Lecturer)

    Advanced Training Course in U.S. Pharmaceutical Patent Practice, held under the auspices of the Ministry of Technology, Guangzhou, China, September 21-25, 1998 (Lecturer, Co-Author and Co-Developer)

    ph 212.687.2770
    fax 212.972.5487
    amorrison@cplplaw.com
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