Jonathan James Underwood, Counsel, Intellectual Property

Jonathan James Underwood

Counsel

Areas of Focus

Jonathan James Underwood, Counsel, Intellectual Property

Jonathan James Underwood

Counsel

underwoodj@akingump.com

Areas of Focus

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Biography
  • Intellectual property lawyer focusing on patent infringement litigation in the pharmaceutical, life science, chemical and medical device industries.
  • Guides clients through the life cycle of a patent infringement suit.
  • Holds a Ph.D. in synthetic organic chemistry and brings significant scientific acumen to cases and matters.

Dr. Jonathan Underwood is experienced in all phases of patent infringement litigation, including abbreviated new drug application (ANDA) litigation, at the trial and appellate level. With a focus on complex life science patent infringement matters, Jon is highly regarded for his work on ANDA litigations and major cases involving antibody technology and vaccine technologies.

Defending clients in patent infringement suits and asserting clients’ patent rights, Jon also counsels clients on strategic IP decisions. In addition, Jon represents clients in litigation before the U.S. Patent and Trademark Office (USPTO) in inter partes review (IPR) proceedings.

As a Ph.D. organic chemist, Jon draws on his technical background and advises clients on matters involving small molecules and other issues involving molecular biology and pharmacology. Jon brings his experience as a post-doctoral research chemist, college educator and U.S. District Court judicial clerk to develop clear, winning strategies that resound with fact-finders who lack technical expertise.

Representative Work
  • Represented a pharmaceutical discovery and development company in a series of ANDA cases, involving a prostate cancer drug, against a number of companies seeking to market a generic version before the expiration of patents listed in the Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book).
  • Represented a pharmaceutical company in ANDA litigation related to methods of treating schizophrenia and related disorders (D.N.J.).
  • Represented a pharmaceutical company in ANDA litigation related to chemical synthesis of opioids (D. Del.).
  • Represented a pharmaceutical company in defending against a complex patent infringement suit involving myriad patents relating to vaccines to treat meningitis B (D.N.J.).
  • Represented a pharmaceutical company in defending against a complex patent infringement suit involving multiple patents relating to antibody therapies for lowering cholesterol (D.Del.).
  • Represented medical device company in defending against patent infringement suit involving surgical screws (D. Mass).
  • Counseled a pharmaceutical and medical device company concerning its potential acquisition of a competitor.

Education
  • J.D., Cornell Law School, 2014

  • Ph.D., University of Southampton, 2003

  • B.Sc., University of Southampton, with honors, 1999

Clerkships
  • U.S.D.C., Eastern District of Pennsylvania

Bar Admissions
  • Pennsylvania

  • U.S. Patent and Trademark Office

Insights and Achievements

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