Experience 

Joe Mahoney concentrates on intellectual property law. He has served as lead counsel in patent, trademark, trade dress, and trade secret litigation. His training in pharmacy (Doctor of Pharmacy) gives him a unique understanding of scientific and technical issues, bolstering his extensive legal experience.

Joe has been recognized by Chambers USA (2008 and 2009) and Legal 500 (2008 and 2009) as "first-rate all the way," and a "good strategist," who "clients approve [for] his 'creative approach and sound reasoning.'"  His experience includes representing innovator drug companies in Hatch-Waxman Act patent litigation; rendering opinions relating to the infringement, validity, and enforceability of patents; and negotiating and drafting patent licenses, co-marketing, and joint venture agreements for a variety of products.

In addition, Joe leads IP due diligence assessments relating to acquisitions and mergers involving complex patent portfolios and pending litigation, including inventor and witness interviews; assesses extensions of FDA and patent exclusivities throughout the entire product lifecycle based on new formulations, new strengths or indications, improved pharmacokinetic profiles, dosage form dissolution profiles, or new salt, enantiomeric, or polymorphic forms; prepares timelines and scenario planning to align the business, clinical/regulatory, and patent objectives and likely outcomes; and provides strategic advice regarding Orange Book listings, patent term extensions, reissues, reexaminations, interferences, and oppositions.

Joe has also conducted portfolio management and patent prosecution relating to a variety of pharmaceutical, chemical, and biotechnological inventions, including food enzymes, gastrointestinal drugs, DNA and peptide sequences, antibodies, chemotherapeutic agents, cancer diagnostics, antimicrobials, vaccines, analgesics, hormone therapy, analgesics, antiemetics, antihypertensives, antidepressants, drug delivery systems (e.g., transdermal patches, controlled and delayed-release oral dosage forms, inhalers, intranasal administration), immunoassays, needleless injectors, stents, and grafts (drug-coated and uncoated).

He joined Mayer Brown in 2001 after eight years with other law firms and three years as a pharmacist at Saint Louis University Medical Center.

Notable Engagements 

• Certain Non-Shellfish Derived Glucosamine and Products Containing Same, US International Trade Commission
• Curators of the University of Missouri and Santarus, Inc. v. Par Pharmaceutical, Inc., US District Court – Delaware
• IV House, Inc. v. Shesol, US District Court – St. Louis, MO, and Shesol v. IV House, Inc., US District Court – Colorado
• Solvay Pharmaceuticals, Inc., et al. v. Cobalt Pharmaceuticals, Inc., US District Court – Atlanta
• Nickels and Dimes, Inc. v. Namco Cybertainment, Inc., US District Court – Chicago
• BriteSmile, Inc. v. Discus Dental, Inc., US District Court – San Francisco
• Unimed Pharmaceuticals, Inc. and Besins Iscovesco v. Watson Pharmaceuticals, Inc. and Paddock Laboratories Inc., US District Court – Atlanta
• Knoll Pharmaceuticals v. Teva Pharmaceuticals, US District Court – Chicago
• Mega Mfg. Inc. v. Haco-Atlantic, Inc., US District Court – Chicago

Education 

Saint Louis University School of Law, JD, cum laude, 1993; Editor-in-Chief, Saint Louis University Law Journal • University of Nebraska Medical Center, Doctor of Pharmacy (Pharm D), 1988

Admitted

• Supreme Court of Illinois
• US District Court for the District of Colorado
• US District Court for the Eastern District of Missouri
• US District Court for the Northern District of Illinois
• US Court of Appeals for the Federal Circuit
• Registered Patent Attorney, US Patent and Trademark Office
• Missouri