Skip to main content

Leslie B. Overman, PhD

Special Counsel

[email protected]

+1.858.314.1555

Share:

Les is a seasoned patent attorney and strategist with a background in biochemistry and experience in the biotechnology industry. His practice encompasses patent prosecution and counseling, preparing freedom to operate analyses, providing noninfringement and invalidity opinions, transactional due diligence, and pre-litigation and litigation support. He also represents clients in patent licensing and other transactions, including clinical trial and independent contractor arrangements and material transfer agreements.

Les primarily works with clients in the life sciences sector, including biotechnology, diagnostics, medical device, and pharmaceuticals companies and innovators. He has particular experience with nucleic acid technologies, amplification techniques and sequencing, molecular diagnostics, molecular biology, and genetics. He also handles matters involving innovations in biologics, immunotherapeutics, nucleic acid-based drugs, glycobiologics, medical devices, cosmetic devices and formulations, nutriceuticals, and simple apparatuses.

Prior to joining Mintz, Les was a partner in the San Diego office of a global law firm, where he focused on patent counseling, global patent procurement, and licensing. Earlier, he practiced at his own firm for several years after serving as an associate at two international law firms. Les has also worked in-house — as a patent agent and attorney at a biotechnology company. Before attending law school, he spent a decade in postdoctoral scientific roles in the biotechnology and academic sectors.

Education

  • California Western School of Law (JD)
  • Texas A&M University (PhD, Biochemistry)
  • University of Maryland (BA, Biochemistry)

Experience

  • Obtained patents in jurisdictions around the world for biopharmaceutical company CureLab Oncology, Inc., a developer of DNA vaccines for cancer and chronic inflammatory disorders.
  • Successfully resolved a potential patent inventorship dispute for a biotechnology start-up. Counseled the company on other patent issues, including patent licensing negotiations.
  • Prosecuted patents for a Ukranian pharmaceutical company to bring products to market in the United States.
  • Handled patent due diligence, including preparing a freedom to operate opinion, for a venture firm’s evaluation of a biotechnology company.
  • Prosecuted midsole design patents for ReShod Walking Shoes, a manufacturer of racewalking shoes
  • Conducted a freedom to operate analysis for a veterinary diagnostics company.
  • Provided patent noninfringement opinions for a Chinese smartphone component manufacturer.

Involvement

  • Past president, San Diego Intellectual Property Law Association
  • Past chair, San Diego Chapter, Licensing Executives Society
  • Member and past chair, Board of Directors, University and State Employees Credit Union, San Diego