• Share
  • Email
  • Print
  • Font Size

Michael H. Brodowski, Ph.D.

Partner
Boston
+1.617.261.3113
Fax +1.617.261.3175

Primary Practice

Secondary Practices

Education

  • J.D., Suffolk University Law School, 1996, (magna cum laude)
  • Ph.D., State University of New York at Buffalo, 1990, (Organic Chemistry)
  • B.A., University of Rochester, 1985, (Chemistry)

Admissions

  • Bar of Massachusetts
  • Supreme Court of the United States
  • U.S. Patent & Trademark Office
  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the District of Massachusetts
  • Biography Overview
  • Additional Background
  • Representative Work
Dr. Brodowski primarily counsels clients regarding the establishment and exploitation of patent rights in the United States and abroad in key marketplaces to support clients’ business objectives. He has extensive experience in post grant proceedings including patent reexamination, reissue, and foreign opposition proceedings. Dr. Brodowski also counsels clients regarding avoiding competitors’ patent rights including freedom-to-operate studies; drafting and negotiating patent license and other technology-related agreements; preparing patent opinions regarding infringement and invalidity; and conducting IP due diligence for public and private business transactions including drafting prospectus and opinion language. He also assists patent litigation counsel.

Dr. Brodowski advises clients in the fields of chemistry including plastics and polymers, pharmaceuticals, specialty chemicals, and chemical manufacturing; materials science and nanotechnology including composite materials; energy including petroleum processing, fuel cells, solar cells, and biofuels; biotechnology; and health care including diagnostic assays, medical devices, and personal care products.

Professional Background

Prior to joining K&L Gates, Dr. Brodowski was a partner in the Patent and Intellectual Property practice group of Testa, Hurwitz & Thibeault, LLP.  Before entering the legal profession, he was a Project Chemist in the Product Development Group of the Toiletries Technology Laboratory at the Gillette Company.  He is the first named inventor on issued U.S. and foreign patents.  Dr. Brodowski's doctorate studies included the multi-step synthesis of the top half of the macrolide antibiotic chlorothricolide, using vitamin C as the starting material.

Professional/Civic Activities

  • American Chemical Society (Division of Chemistry and the Law)
  • Boston Patent Law Association
  • Volunteer Coach - Charles River, YMCA, Jr. Kickers Soccer league

Speaking Engagements

  • “New Year and New Patent Laws That Scientists Should Know,” American Chemical Society’s ACS Small and Medium Business Webinar™ Series, January 12, 2012 (invited speaker).
  • “How the Patent Reform Act Will Impact Your Business,” K&L Gates Live Program, Boston, MA, October 13, 2011 (organizer and co-speaker).
  • “Global Patent Protection and International Business Strategies,” American Chemical Society’s ACS Small and Medium Business Webinars™ Series, September 30, 2010 (invited speaker).
  • “A Global IP and Business Strategy,” Sino-American Pharmaceutical Professionals Association – New England, SAPA-NE 10th Annual Conference 2008,“From Test Tube to Pharmacy Shelf, the Opportunity and Challenges for Biopharmaceutical Industry,” Massachusetts Institute of Technology, Cambridge, MA, June 14, 2008 (invited speaker).
  • “2008 Risk Management and Compliance Overview - Key Issues Every Company Needs to Know,” K&L Gates Live and Webcast Program, Boston, MA, April 16, 2008.
  • “Strategically Creating a Valuable IP Portfolio,” Testa, Hurwitz & Thibeault, LLP in partnership with MIT Technology Review: “Putting Your Best Foot Forward: Using Intellectual Property to Create, Protect and Realize Value for Your Business,” Cambridge, MA, November 10, 2004 (organizer and speaker).
  • “Notebooks, Invention Disclosures, and Other Time Consuming Activities,” 226th American Chemical Society National Meeting, New York, NY, September 7-11, 2003 (invited speaker).

Additional Information

Selected Publications
  • Brodowski, M.H. and Culverwell, J.A., “Personalized Medicine: A Dynamic Patent Landscape,” The National Law Journal, December 12, 2011 (IP Supplement Online).
  • Brodowski, M.H. and Bears, J.D., “The Written Description Requirement is Alive and Well,” K&L Gates Intellectual Property Alert (April 2010).
  • Brodowski, M.H. and Komm, C.A., “Recent Federal Circuit Decision Demands Adjustment to U.S. Patent and Trademark Office’s Patent Term Adjustment Policy,” K&L Gates Intellectual Property Alert (January 2010).
  • Brodowski, M.H., “Inadequate assignments can imperil patent rights,” The National Law Journal, 32(13):54 (2009).
  • Brodowski, M.H., “Patent Due Diligence for Investment in a Technology-Based Company,” in M&A Insights:  Spotlight On Intellectual Property Rights, a mergermarket study in association with CRA International and K&L Gates (December 2008).
  • Brodowski, M.H., Edwards, J.M., Pomfret, M.D., and Turano, T.A., “Managing Risks Associated with IP,” The Metropolitan Corporate Counsel, 16(7):30 (July 2008).
  • Brodowski, M.H., Turano, T.A., and Vito, C.C., “Managing Innovation: Patent Basics for Biotechnology Counsel,” Chapter II, pp. 25-66, in Biotechnology and the Law, E. Smith Ewing & H.B. Wellons, eds. (American Bar Association 2007).
  • Brodowski, M.H., “Good Patent Practices Never Out of Style,” The Metropolitan Corporate Counsel, 14(3):23 (March 2006).
  • Brodowski, M.H., “Changes headed to patent system: Will you be ready?” Boston Business Journal, p. 47, June 3-9, 2005.
  • Brodowski, M.H., “Biotech Research Tool Patents:  The Good, The Bad, and Freely Available?” biotech.about.com, November 18, 2004.
  • Brodowski, M.H., “Making intellectual property portfolios attractive to venture capitalists,” IP Value 2005: Building and enforcing intellectual property value.  An international guide for the boardroom, pp. 159-162(Globe White Page Ltd. 2004).
  • Brodowski, M.H., “Excused from patent infringement liability?  Think again,” Mass High Tech, p. 17, August 2, 2004.
  • Brodowski, M.H., Lawrence, M.B. and Chan, K.K., “Foreign Patent Filing:  Protecting Your Technology in a Global Environment,” Global Intellectual Property Asset Management Report, 6(7):1, July 2004.
  • Brodowski, M.H., “Due Diligence for an Investment in a Life Sciences Company,” Testa, Hurwitz & Thibeault, LLP’s Venture Update, Summer 2003.
  • Brodowski, M.H. and Greenhalgh, D.A., “Provisional Patent Applications – A Trap for the Unwary,” Testa, Hurwitz & Thibeault, LLP’s Intellectual Property Observer, Winter 2003.
Patent Reexamination, Reissue, Opposition and Related Proceedings
  • Reexamined successfully U.S. Patent No. 7,871,512, which relates to oxidative ultrasound-assisted fossil fuel desulphurization processes. Eighteen claims were rejected and cancelled with a favorable claim interpretation on the record for the remaining claims
  • Reexamined successfully U.S. Patent No. 7,081,196, which relates to oxidative ultrasound-assisted fossil fuel desulphurization processes. The patent was maintained with claims substantially narrowed favorably for the client
  • Issued a reexamination certificate for U.S. Patent No. 4,984,597, which relates to semiconductor manufacturing equipment. The reexamined patent was successfully asserted in a patent infringement litigation where a favorable jury verdict resulted in a $70 million settlement, with the patent upheld as not invalid and infringed by the Court of Appeals for Federal Circuit. Was deposed in litigation as reexamination prosecution counsel
  • Opposed successfully European Patent No. 0 439 095 entitled, “Recombinant immunoconjugates for therapy comprising interleukin 2,” through oral proceedings on appeal to the Board of Appeal. The patent was maintained with claims canceled or substantially narrowed to specific compositions favorable for the client
  • Defended successfully opposition to European Patent No. 0 442 977 B1, entitled, “Perfusive Chromatography,” through oral proceedings on appeal to the Board of Appeal, which upheld the patent as trivially amended during initial proceedings. Was permitted to rebut opposer’s expert before the Board at oral proceedings
  • Issued a broadening reissue patent of U.S. Patent No. 5,498,545 (RE 37,485), which relates to a multichamber high throughput mass spectrometry system and methods
  • Advised a global life sciences company regarding ex parte and inter partes patent reexamination strategy and proceedings within context of a district court patent infringement litigation
  • Opposing European Patent No. 1 668 095, which relates to oxidative ultrasound-assisted fossil fuel desulphurization processes including centrifugation

IP/Patent Due Diligence and Audits
  • Represented investors in patent due diligences relating to processes and apparatus for photosynthetic production of chemicals using genetically-engineered micro-organisms; technology for the polymerization of pharmaceuticals; and polymeric sustained-release vehicles for hormones related to women’s health
  • Represented global medical technology and laboratory equipment manufacturer in due diligence relating to acquisition of a medical device company, including negotiating and drafting a patent license agreement with global leader in coronary and endovascular products
  • Conducted patent portfolio audits and counseling for an early stage Swiss company relating to an improved diagnostic for and antibody-based treatments and vaccines against human immunodeficiency virus (HIV); for a Fortune 100 company relating to biodegradable polymers; and for a public company relating to ultrasonic-assisted fossil fuel processing technology

Patent Clearance/Freedom-To-Operate and Opinions Regarding Infringement and Invalidity
  • Represented major multinational generics pharmaceutical developer and manufacturer in patent analysis and opinions regarding infringement and invalidity involving acne treatment and product kit containing same
  • Represented major multinational brand name pharmaceutical developers and manufacturers in patent analysis and opinions regarding infringement and invalidity involving bioreactor technologies and pharmaceutical compositions including small molecules and biologics
  • Represented industry leading analytical instruments and biomanufacturing systems company in patent analysis and opinions regarding infringement and invalidity involving analytical instruments and methods for measuring cellular bioenergetics 
  • Provided patent analysis, counseling and opinions relating to patent infringement and invalidity for products including catheters, bioreactors, toner formulations, cytologic analytical instrumentation, fusion proteins, pharmaceuticals, topical formulations, dental products, chromatography systems, surface chemistry for sample plates, and plastic transaction cards

IP/Patent Portfolio Development and Counseling
  • Established and develop patent portfolio of a publicly traded life sciences company focused on the discovery, development and commercialization of novel molecular diagnostics based on discovered biomarkers using its proprietary systems biology analytical platform, which company has raised over $56 million in private funding and went public in January 2011, raising over $40 million. Also advise company regarding trade secrets, third party patent rights, licenses to patent properties, and due diligence in connection with financings
  • Established and developed patent portfolio of a start-up developer and manufacturer of solid oxide fuel cells for portable use through its Series B financing of $30 million, for a total of $40 million of funding. Also advised regarding trade secrets, third party patent rights, licenses to patent properties, and due diligence in connection with financings
  • Developed extensively the patent estate of bio-instrumentation developer and manufacturer, particularly for biomolecule purification and analysis systems such as mass spectrometers and chromatography systems, peptide and oligonucleotide synthesis systems and reagents, nucleic acid sequencing methods and apparatus, and microfluidic devices, which company was acquired by a major multinational life and analytical sciences company for $360 million
  • Established and develop patent portfolio of a leading supplier of material technology to the printed and flexible electronics industry, including organic semiconductor, dielectric and solar cell interfacial materials, including managing and coordinating patent activities with a collaborator who is a global chemical developer and manufacturer, and coordinating patent protection of technology exclusively licensed from a major research university
  • Established and develop patent portfolio of start-up nanotechnology company developing and commercializing methodology for providing high purity carbon nanotubes having select properties. Also advise regarding third party patent rights, and opposing non-U.S. patent application. Coordinating patent prosecution with major research university from whom technology exclusively licensed
  • Represent one of the largest research enterprises based in a pediatric medical center in connection with patent prosecution relating to heart valves, molecular diagnostics, and other medical-related technology
  • Established and developed patent portfolio of start-up dermo-pharmaceutical company developing hydrogel-based during delivery and wound dressing products. Also advised regarding trade secrets, third party patent rights, collaborations with research institutes and universities, and trademarks
  • Represented major U.S. pharmaceuticals company in patent portfolio counseling and prosecution, and freedom-to-operate studies, relating to small molecules and biologics for a variety of indications
© 2012 K&L Gates LLP. All Rights Reserved.  |