Overview
Michael Siekman focuses his practice on intellectual property matters, including patent prosecution, licensing and post-grant proceedings and litigation. Leveraging over 25 years of experience, Michael has built in-depth patent portfolios, advising clients in the biotechnology and pharmaceutical industries.
Michael keeps clients’ business goals in mind as he regularly provides legal counsel in the litigation matters, including Hatch-Waxman matters, and post-grant solutions for biosimilars. He has successfully led matters before the Patent Trial and Appeal Board (PTAB) and the European Patent Office. His licensing practice involves IP-related aspects of mergers, acquisitions, IPOs and other financing and licensing programs.
Previously, Michael was chair of the practice group leaders and co-chair of the biotechnology practice group of an intellectual property boutique law firm.
Results
- Lead counsel in two IPRs defending BTG International’s patent covering its antibody product. Obtained termination of IPR with parallel ITC proceeding and denial of institution of second IPR*
- Lead counsel in four IPRs defending four Cold Spring Harbor Laboratory patents relating to short hairpin RNA (shRNA). Obtained denial of institution of all four IPRs, preserving Cold Spring Harbor’s widely licensed shRNA patent portfolio*
- Lead counsel in interference for Dyax against Adimab. Invalidated Adimab’s patent and obtained patent to same invention by proving 11 months of diligence*
- Served as an expert on US patent law in several EPO opposition proceedings*
- Defended IP diligence on biotechnology client in acquisition valued at USD$6.5 billion*
- Obtained seminal patents in the fields of gene therapy, phage display, yeast display, and the transgenic production of proteins in animals*
- Prosecuted one of the most widely licensed biotechnology patent portfolios, with projected milestones and royalties of several hundred million dollars per year*
- Directed the patent prosecution for a lifesaving biologic, including a successful appeal to the Court of Appeals for the Federal Circuit*
- Obtained Patent Term Extensions and coordinated Supplementary Protection Certificate strategies for several clients*
*Matter handled prior to joining McDermott
Recognitions
- IAM Patent 1000 – The World’s Leading Patent Practitioners, 2022
- Legal 500 USA, Recommended Lawyer, 2022
- Massachusetts Super Lawyer – Intellectual Property, 2011-2019
- Boston University Journal Science & Technology Law, Articles Editor
- National Science Foundation Award
Community
- American Intellectual Property Law Association–PTAB Trial Committee
- Boston Patent Law Association
- Juvenile Diabetes Research Foundation (JDRF)
– IP Task Force, 2010
̶- Diabetes Innovation Fund Board of Directors, 2011
̶- New England Chapter Board of Directors, 2013¬-2016
̶- Nominating and Governance Committee, 2018 – present
Credentials
Education
Boston University School of Law, J.D., Concentration in Intellectual Property, with Honors, 1995,
Bates College, B.S., Biology, 1990
Courts/Agencies
Court of Appeals for the Federal Circuit
United States Patent & Trademark Office
Admissions
District of Columbia
Massachusetts
