Eric M. Balicky, Ph.D.
Principal
Management Committee
For more than 19 years, Eric has represented a diverse array of clients in IP-related matters, with an emphasis on strategic IP counseling, patent preparation and prosecution, IP due diligence and legal opinions.
Eric also has substantial experience in patent litigation, providing a perspective that informs and enhances his other practice areas. Since 2020, Eric has received distinction in The Best Lawyers in America® for his patent law expertise. He was also recognized in 2020, 2022 and 2023 by LMG Life Sciences as a Life Sciences Star for Patent Prosecution. Eric has also been named a Rising Star in Intellectual Property Law by Super Lawyers® since 2017.
With a technical background in molecular biology and biochemistry, Eric has represented both corporate and university clients in the biotechnology, pharmaceutical, bioprocessing and medical device areas. Representative areas of technical focus include:
- therapeutic antibodies and other protein-based therapeutics,
- cancer detection, diagnosis and therapy,
- cancer immunotherapy, including CAR-T therapy,
- microRNAs and other non-coding RNAs,
- genome editing techniques, including CRISPR,
- vaccines and vaccine production,
- small molecule therapeutics, including enantiomers/diastereomers,
- immunological detection methods and assays,
- in situ hybridization probes and techniques,
- synthetic peptide compounds,
- PCR amplification and decontamination techniques,
- bioinformatics, including DNA sequencing methods and algorithms,
- protein engineering and redesign,
- natural product synthesis in plants and other hosts,
- transgenic mammals and plants,
- dialysis methods, systems and devices,
- aquaculture products and methods,
- filtration systems and processes, including tangential flow filtration.
Experience
- Managed prosecution of several large patent estates, including multiple patent families with worldwide filings,
- Prepared invalidity, non-infringement and freedom-to-operate opinions,
- Conducted several patent appeals before the Patent Trial and Appeal Board (PTAB) at the USPTO, resulting in multiple PTAB decisions reversing the Office on all contested grounds of rejection,
- Evaluated and conducted due diligence investigations of third party IP,
- Defended client IP in numerous due diligence investigations,
- Represented both plaintiff and defendant clients in patent infringement litigation,
- Worked with European counsel to defend client patents in two opposition proceedings before the European Patent Office, each involving multiple opponents,
- Persuaded USPTO to reject a non-compliant third party preissuance submission in a client patent application,
- Prosecuted reissue patent, design patent and trademark applications.
Credentials
Bar Admissions
- U.S. Patent and Trademark Office
- Massachusetts
- New Hampshire
- U.S. District Court, District of New Hampshire
Education
- B.S. in Biology, magna cum laude, Allegheny College
- Ph.D. in Molecular and Cellular Biology, Dartmouth College
- J.D., Boston College Law School
Practice Areas
- Agreements
- Counseling
- Design Patents
- IP Audits
- IP Diligence
- IP Litigation
- Licensing
- Patents
- Post-Grant Proceedings
- Trade Secrets
- Trademarks
Technologies
- Bioinformatics
- Biologics & Immunotherapies
- Biotechnology & Life Sciences
- Chemistry
- Materials Science
- Medical Devices
- Pharmaceuticals
Speaking Engagements
- Participated as Panelist at the "Princeton-Yale Innovators Ignite Event," March 31, 2022
Professional Associations
- Massachusetts Bar Association
- New Hampshire Bar Association
- Association of University Technology Managers (AUTM)
- Dartmouth Lawyers Association