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Muriel M. Liberto, PhD

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[email protected]

+1.212.692.6257

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Muriel is a patent strategist trusted by her clients to help manage and grow patent portfolios covering their most important innovations. She uses her technical expertise and legal acumen to assist clients in obtaining exclusivity around key assets and ensuring they have space for growth. She guides clients in developing intellectual property strategies that are integrated with product development to maximize value by keeping IP in alignment with business goals. She has served as lead IP counsel for her clients undergoing diligence in connection with financings and acquisitions. In addition, she has worked on the other side of the deal, with both investors and companies evaluating opportunities. This dual experience brings unique perspectives to leverage on her clients’ behalf, whether they are conducting the diligence or are its target.

Muriel’s practice is focused on life sciences industries, with particular emphasis on biotechnology and pharmaceutics. Her clients range from academic and non-profit institutions to emerging and more established public and private companies.

Muriel has worked on a variety of technologies including molecular diagnostics, personalized medicine, gene therapy, small molecule therapeutics, vaccines, and drug delivery systems, including oral dosage forms, inhaled dosage forms, and tumor targeted theranostics. She has also worked on bioinformatics and machine learning based technologies leveraged to provide insight from genomic, epigenomic, and proteomic data for therapeutic applications; as well as natural language processing based techniques in clinical decision support.

Muriel has had considerable success with technologies that are difficult to protect in the current legal environment that persists in the US. She works closely with clients having technologies in these areas to develop worldwide patent strategies taking advantage of differences in the law across jurisdictions to provide the best possible coverage.

Muriel is committed to nurturing emerging life sciences companies in the local ecosystem through mentorship and training in conjunction with the Firm’s sponsorship of organizations dedicated to accelerating the development of technologies into successful businesses. Muriel also engages in pro bono legal work outside of patent law and has served on the firm’s Pro Bono Committee. She has assisted victims of persecution to obtain asylum in the United States, both through the affirmative application process and before the US immigration court. She has also assisted nonprofits with diverse matters ranging from drafting incorporation documents to obtaining federal tax-exempt status and negotiating the return of funds lost through a telemarketing scam.

Education

  • Fordham University (JD, magna cum laude)
  • Ohio State University (PhD, Biochemistry)
  • College of William & Mary (BS, Chemistry)

Viewpoints

FDA’s New Biosimilar Action Plan Represents the Next Step for Improving Drug Competition

July 19, 2018 | Blog | By Joanne Hawana, Muriel M. Liberto, PhD, Esq.

On July 18, 2018, after months of alluding to the various aspects of an upcoming “Biosimilar Action Plan” as another prong within FDA’s broader Drug Competition Action Plan (DCAP), FDA finally unveiled its plan for stimulating and improving the marketplace for biosimilars in the U.S.
In the time since the Federal Circuit issued its Vanda Pharma decision in April, Vanda Pharm. Inc. v West-Ward Pharm. Intl. Ltd. 887 F.3d 1117 (Fed. Cir. 2018), we have had more good news for the patent eligibility of claims relating to diagnostic or similar tests utilized in treating patients.

Personalized Medicine Gets a Boost from Federal Circuit’s Vanda Pharma Decision – PART II: Enforcement

May 1, 2018 | Advisory | By Muriel M. Liberto, PhD, Esq., Jennifer Dereka

The Federal Circuit’s decision in Vanda Pharm. Inc. v West-Ward Pharm. Intl. Ltd. (2016-2707, 2016-2708 April 13, 2018) provided some good news on the subject matter eligibility front for innovators and other stakeholders in the personalized medicine space, as discussed in a previous post.

Personalized Medicine Gets a Boost from Federal Circuit’s Vanda Pharma Decision - PART I

April 19, 2018 | Advisory | By Muriel M. Liberto, PhD, Esq.

The Federal Circuit provided a welcome boost for stakeholders in the field of personalized medicine with its recent decision in Vanda Pharm. Inc. v West-Ward Pharm. Intl. Ltd. (2016-2702, 2016-2708 April 13, 2018).
On March 4, 2014, the U.S. Patent and Trademark Office (“USPTO”) issued a memorandum to the Patent Examining Corps with guidance for determining the patent eligibility of claims relating to products of nature and laws of nature (“the Guidance”) in view of the U.S. Supreme Court decisions in Assoc. for Molecular Pathology v. Myriad Genetics (“Myriad”) and Mayo Collaborative Services v. Prometheus Laboratories, Inc. (“Prometheus”).

Events

Speaker
Jan
16
2019

ELabs NYC

Planning for Success: Integrating Product Development with Intellectual Property and Regulatory Strategies

New York, NY

Speaker
Jun
18
2018

IP 101 for Emerging Companies

Princeton Innovation Center BioLabs

Princeton Innovation Center BioLabs 303A College Road East Plainsboro, NJ

Speaker
Apr
4
2018

New York Life Science Founders Seminar #10

BioLabs

NYU Langone 180 Varick Street, 5th Floor New York, NY

Speaker
Jul
19
2017