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Alexander R. Trimble, PhD

Member

[email protected]

+1.415.432.6018

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Alex is an experienced patent attorney with a diverse client base. He provides leading pharmaceutical companies with strategic legal and business advice pertaining to patent prosecution and patent portfolio management. Alex regularly evaluates issues related to patentability and freedom-to-operate. He holds a PhD in organic chemistry from UC Berkeley and focuses primarily on chemistry pertaining to pharmaceuticals, chemicals, materials, and polymers.

Alex is a registered patent attorney who advises clients on matters pertaining to patent prosecution and patent portfolio management. He provides guidance to clients on developing portfolios for critical assets, and helps devise strategies for expanding protections on existing portfolios. Alex regularly performs prior art, landscape, and freedom-to-operate searches as part of his evaluation of patentability and freedom-to-operate issues, and prepares patentability, validity, and freedom-to-operate opinions for portfolio analyses and investment due diligence.

Alex has prepared and prosecuted patent applications for both public institutions and private pharmaceutical companies. In addition, he has managed patent portfolios for a variety of clients, prepared patentability and freedom-to-operate opinions for venture capital groups, and assisted in the development of a new product in the personalized medicine space for a medical technology provider. Although his practice focuses primarily on chemistry — including pharmaceuticals, chemicals (organic, inorganic, and organometallic), materials, and polymers — Alex also has experience with biotechnology (assays, PCR), polymeric drug delivery methods, fuel cell materials, and nanotechnology.

Alex’s PhD research focused on the rational design of new materials for nanometer scale imaging, and included the design and synthesis of small molecules and functional macromolecules for use in studies for nanoscale patterning.

viewpoints

In a precedential opinion issued on April 11, 2024 in Salix Pharmaceuticals, Ltd. v. Norwich Pharmaceuticals Inc., Nos. 22-2153, 23-1952, the U.S. Court of Appeals for the Federal Circuit affirmed the U.S. District Court for the District of Delaware’s decision holding claims directed to polymorphic form “β” of rifaximin invalid as obvious. 

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Filing a continuation application from a parent patent is an implicit admission that obviousness-type double patenting (ODP) applies to the resulting continuation patent.  A Terminal Disclaimer in the continuation patent over the parent patent is thus necessary to avoid the public policy concerns underlying ODP.

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Filing a pharmaceutical patent application after the start of Phase II clinical trials can maximize the patent’s value and exclusivity period. In an article also published in IAM magazine, Mintz Member Alex Trimble talks about delayed filing options and how to avoid invalidation of the patent based on its “public use” during the clinical trial or published information about the trial.

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In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Mintz patent attorneys Lily Zhang and Alex Trimble, PhD, discuss double patenting, a complicated and sometimes confounding area of patent law.
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On September 21, 2017, the Comprehensive Economic and Trade Agreement (CETA) signed between the European Union (EU) and Canada provisionally entered into force in Canada. 
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News & Press

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Mintz is pleased to announce that 120 firm attorneys have been recognized as leaders by Best Lawyers® in the 2024 edition of The Best Lawyers in America©.

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As part of its Life Sciences special, IAM published an article authored by Member Alex Trimble discussing when in the research and development process pharma companies should file clinical trial-related patents.

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Best Lawyers® recognized 108 firm attorneys in the 2023 edition of The Best Lawyers in America©. Notably, two Mintz attorneys – Poonam Patidar and Scott M. Stanton – received 2023 “Lawyer of the Year” awards, and 28 firm attorneys were included in the inaugural edition of Best Lawyers: Ones to Watch.

Mintz continues to expand its bicoastal Intellectual Property Practice with the addition of veteran patent attorney Alex Trimble, Ph.D. who will serve as a Member in the San Francisco office.
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Events & Speaking

Moderator
May
12
2022

Prioritizing Your Patent Filings: Business and Legal Considerations

ACC, San Francisco-Life Sciences CLE Conference

Virtual

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Speaker
Jul
12
2017

Patent Fundamentals Bootcamp 2017

Practising Law Institute

PLI California Center, San Francisco, CA

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Alex is an experienced patent attorney with a diverse client base. He provides leading pharmaceutical companies with strategic legal and business advice pertaining to patent prosecution and patent portfolio management. Alex regularly evaluates issues related to patentability and freedom-to-operate. He holds a PhD in organic chemistry from UC Berkeley and focuses primarily on chemistry pertaining to pharmaceuticals, chemicals, materials, and polymers.

Recognition & Awards

  • Best Lawyers in America: Biotechnology and Life Sciences Practice (2023 – 2024)

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Alex is an experienced patent attorney with a diverse client base. He provides leading pharmaceutical companies with strategic legal and business advice pertaining to patent prosecution and patent portfolio management. Alex regularly evaluates issues related to patentability and freedom-to-operate. He holds a PhD in organic chemistry from UC Berkeley and focuses primarily on chemistry pertaining to pharmaceuticals, chemicals, materials, and polymers.

Involvement

  • Member, American Chemical Society
  • Member, California Bar Association
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