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Muriel M. Liberto, PhD

Member

[email protected]

+1.212.692.6257

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Muriel helps US and international biotechnology and pharmaceutical clients develop and strategically manage their IP assets worldwide. An important feature of her work is ensuring that patent assets remain aligned with business goals to maximize their value. Her practice involves patent portfolio management, drafting, and procurement as well as related analyses, including patentability, freedom to operate, and invalidity. Muriel also works with corporate counsel on IP-related aspects of financing and licensing transactions. She has participated in mediation and arbitration proceedings and brings insights on alternatives to litigation for resolving IP-related claims. Muriel is committed to pro bono work and has served on the firm’s Pro Bono Committee.

Muriel works with clients to obtain worldwide patent protection for their intellectual property. In over 10 years of practice, she has drafted and procured patents for a wide variety of technologies in the biotech and pharmaceutical spaces. Her clients include innovators in the fields of molecular diagnostics, personalized medicine, and medical therapeutics, including therapeutic agents based on small molecules, nucleic acids, lipids, or peptides. In addition to patent procurement and portfolio management, Muriel assists her clients by conducting patentability, freedom to operate, and invalidity analyses.

Muriel also frequently partners with corporate counsel on IP-related aspects of corporate transactions, including IP diligence related to public offerings and acquisitions as well as confidentiality, materials transfer, licensing, and research collaboration agreements. Muriel has also participated in mediation and arbitration proceedings conducted under the International Institute for Conflict Prevention and Resolution as a special assistant to the mediator/arbiter. Through this experience, she is able to offer her clients insights into alternatives to litigation for resolving IP-related claims.

In addition, Muriel is deeply committed to pro bono work 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 via appeals 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

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.
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.
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.
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
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