Business Meets Science In Jones Day's Global Life Sciences Group

Saturday, January 1, 2005 - 01:00

Editor: Dr. Coruzzi, would you give our readers something of your professional background?

Coruzzi: I have a Ph.D in biology, with a specialty in cell biology. In the early 80s I was a postdoctorial fellow at Mt. Sinai School of Medicine. While I was on an academic track at the time, I thought that law school might provide me with an opportunity to utilize my scientific background in a very practical way. This was very attractive to me because that was the time when gene splicing was invented. Genentech went public, and the United States Supreme Court ruled that living things were patentable. I thought that there were very few lawyers who understood the science underlying these developments. While the biotech industry was new and considered risky, I thought it was a risk worth taking - a chance to get in on the ground floor so to speak, and grow with the industry.

While attending law school I had the good fortune to meet S. Leslie Misrock of Pennie & Edmonds. He was looking for scientists that he could train to be good lawyers and he believed that it was easier to make a lawyer out of a scientist rather than the other way around. I worked at Pennie & Edmonds while attending law school at night and, after graduation, went on to become a member of the firm's biotechnology/pharmaceutical patent practice. It was this group of about 100 lawyers, including about 35 Ph.Ds, that we brought to Jones Day in 2004.

Editor: Your practice must represent a very unusual career opportunity for people with one foot in the academic world and the other in the legal world.

Coruzzi: It does. We continue to recruit scientists in cutting edge technologies that join our training program at Jones Day while attending law school by night. We also recruit law school students through our Summer program. We look for students with advanced degrees in the relevant sciences - chemistry, molecular biology, genetics, virology. I think our targeted recruiting efforts are very successful. The constant influx of younger scientists keeps the group as a whole on the cutting edge of scientific and technological developments. The "on the job" training they receive at Jones Day ensures the development of great lawyering skills. At Jones Day, associates can gain experience in all aspects of IP law, including prosecution, interferences and litigation of both biotech and pharma patents. Our litigators do quite a bit of work in defending innovative drug companies from generic challenges.

Editor: I assume that your background in the life sciences has been of great value in the evolution of your patent procurement. IP and life sciences practice. Please tell us how this has developed over your years at Pennie & Edmonds.

Coruzzi: Initially there were no biotech patents, so my initial experience was in filing some of the very first patent applications. There were no rules then as to how to claim these types of inventions. so the practice consisted of keeping one's finger on the pulse of the existing patent law and adapting it to an evolving pharmaceutical and biotech industry. As the industry matured, so did our practice, particularly with respect to licensing, cross-licensing and litigation. I have been engaged in all aspects of this evolution, including appellate work. I would say that a Ph.D background is particularly invaluable in District Court claim construction proceedings and in an appellate court setting. You know the subject-matter and that provides a certain comfort level and confidence in presenting it to the court. In addition, most Ph.Ds have done some teaching at the college level which is good training for communicating complex scientific issues in an understandable way to a judge or jury. It also makes you think on your feet and to prioritize and summarize the issues. Those skills, incidentally, are also important in dealing with investors: a lawyer who actually knows the client's technology is in a much better position to explain it to people who are being asked to invest in that technology than one who does not.

Editor: How did you come to Jones Day?

Coruzzi: At Pennie & Edmonds we had a terrific practice. However, most boutique intellectual property firms were experiencing the encroachment of the large general practice law firms, particularly on the litigation side. We felt that merging with a firm of equal size was not a satisfactory response. Jones Day afforded us a number of attractive features.,particularly an established international platform. Jones Day has an office in Munich (where the European Patent Office is located) that handles European patent prosecution,oppositions and litigations. Jones Day also has many offices in Asia that handle IP litigation. Teaming up with the firm constituted a way for us to internationalize the practice we had built at Pennie & Edmonds.

Editor: The Life Sciences Group is a firm-wide practice? There are members of the group throughout the Jones Day worldwide network?

Coruzzi: Yes. But we are much more than a self-contained group spread across the firm. We draw upon the firm's abundant resources in healthcare, tax and the corporate area on a regular basis. Being able to deal with the tax implications of a deal involving a particular patent or set of IP rights, for example, is extremely important to many of our clients and something that we could not have offered them at Pennie & Edmonds.

Editor: And the clients? What types of industry does the group represent? Where?

Coruzzi: Among Jones Day's clients are some of the world's largest pharmaceutical houses. At Pennie & Edmonds, we had clients from among that group, but we also represented a considerable number of midcap biotechnological companies, and we have brought them with us to Jones Day. An interesting development in this area, and something we were beginning to see at Pennie & Edmonds, is the increased need for IP services in the investment banking/venture capital area. Proper diligence of the IP rights is often critical to investments made by these groups, which include securitization of IP rights.

Editor: The concept of "science projection" that you have pioneered as a patent portfolio strategy for the management of new inventions has received considerable attention. Would you tell us about this process?

Coruzzi: The process begins with the inventor coming to you with a basic idea or a single application. We work with them to project where this technology is going from a commercial point of view and how to stake a claim to it. The challenge, of course, is in putting some substance to the initial idea or application in order to comply with the requirements of the patent laws.

Editor: Please tell us about your work in managing proceedings at the European Patent Office.

Coruzzi: These are interesting proceedings from an American perspective. Unlike our proceedings. discovery is, more or less, limited to paper. A panel of three - usually the panel chief, the secretary and an examiner - hears the initial opposition on an issue by issue basis. The process is very methodical. Multi-party opposition proceedings can go on for days. There is a right of appeal. pursuant to which the case can be presented again.

Editor: Is the European process likely to be adopted by the U.S. any time soon?

Coruzzi: There is considerable support for such a development. The American Intellectual Property Law Association, the New York Intellectual Property Association and the biotechnology industry generally have come out in favor of it. A bill is pending in Congress, and even if it does not pass during this session, the thinking is that it will inevitably. The industry is trying to find a way in which to deal with patents that is less expensive than full-scale litigation before a judge and jury. A process similar to that in place in Europe would deal with nuisance patents and serve to encourage the protection of legitimate ones.

Editor: Assuming a European-type regime is adopted by the U.S., in what ways does this change things for counsel charged with overseeing a patent portfolio?

Coruzzi: To the extent that U.S. counsel have developed their expertise under the patent laws in force today. I think they will be disadvantaged compared to a firm like ours with a practice already underway in Europe. There is a learning curve here. Jones Day, with a considerable amount of European experience, is going to be well equipped to deal with the adoption of a similar patent procurement and opposition process in the U.S. I suspect that our group is going to be very busy when the U.S. adopts a system similar to the one in Europe.

Editor: You have talked about the European and U.S. patent regimes. Are there other important regimes, say, the Japanese? How do these other systems fit in with the evolution you have described?

Coruzzi: In Japan they are becoming much more litigious than they were in the past. From a prosecution point of view, the Japanese have issued patents that are pretty circumscribed. and Japanese companies did not favor litigation. However, with the explosion of the electronics industry in Japan, recourse to litigation has become much more frequent.

Editor: What about the future? Are we headed toward a single. global regime governing patents in the life sciences area?

Coruzzi: I do not think so - there is a great deal of territoriality in this area. They have made progress in Europe in terms of streamlining the procurement of a European patent, but it is somewhat misleading to speak of a single European system. European patents are enforced nationally, according to the laws of some 25 different jurisdictions, each with its own language, laws, customs and, indeed, sovereignty. These are not easy issues to address. I believe that progress will be made toward a single global patent system over the years to come, but I do not think we will actually see such a system any time soon.

Editor: Where would you like this practice to be in five years?

Coruzzi: Strategic development of the group's biotech/pharma capabilities on a worldwide basis would be very gratifying. By this, I do not mean that every Jones Day office should have full capability. In an age of instant communication that is simply not necessary. Specialty operations, however, in offices such as London, Munich and New York - which provide an excellent corporate environment for life sciences - would serve to enhance the services we offer our clients. An integrated approach to the services we offer our clients, together with on-the-ground knowledge that is specific to those clients, is the key to success in the future, in my opinion. The capabilities of Jones Day are such as to make me think we are well on the way to a bright future.