Joe Mahoney is global co-chair of Mayer Brown's Intellectual Property Practice and the Life Sciences Industry Group. He concentrates his practice on IP litigation with an emphasis on pharmaceuticals, biotechnology, chemicals and medical devices.
His training in pharmacy (Doctor of Pharmacy) gives him a unique understanding of scientific and technical issues, bolstering his extensive legal experience. His patent litigation and counseling practice includes representing clients in Hatch-Waxman Act and other patent litigation; post-grant proceedings at the Patent Trial and Appeal Board (PTAB); biosimilars; 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. He also has substantial experience in trademark, trade dress and trade secret litigation and counseling.
In addition, Joe leads IP due diligence assessments relating to acquisitions and mergers involving complex IP portfolios and pending litigation, including inventor and witness interviews; assesses title, encumbrances, extensions of FDA and patent exclusivities throughout the product lifecycle based on improvements, 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, post-grant reviews, reissues, reexaminations, interferences, and oppositions.
Joe has argued before the Patent Trial and Appeal Board in numerous inter partes reviews and ex parte proceedings. He has also conducted portfolio management and patent prosecution, reissues and reexaminations relating to a variety of pharmaceutical, medical device, chemical, and biotechnological inventions.
Joe has been recognized by Chambers USA (2015) as “particularly known for his work in life sciences patent litigation, including Hatch-Waxman cases and proceedings before the USPTO.”
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.