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William H. Epstein
William H. Epstein, prior to joining Gibbons, spent 35 years at Hoffmann-La Roche Inc., most recently as Associate Patent Counsel and Assistant Corporate Secretary. Mr. Epstein was responsible for various patent litigations on behalf of Hoffmann-La Roche Inc. involving products such as Accutane, pegylated interferon, and Bovatec. This responsibility included mapping strategy, conducting depositions, preparing motions and arguing cases before various courts. He was involved in all aspects of patent prosecution in the area of chemical and biotech patents as they relate to pharmaceuticals, diagnostics and vitamins. Mr. Epstein was also involved in prosecuting interferences as well as patent litigation to enforce patents against infringers and to invalidate third party patents by third parties. Mr. Epstein was involved in establishing contractual relationships between Roche and third parties in the areas of licenses, strategic alliances, and collaborative arrangements in research, development and marketing. These contractual relationships involved licensing, co-marketing, co-promotion and joint venture agreements with third parties such as DuPont, Procter & Gamble, Syntex, Glaxo and Gilead.Education
The George Washington University School of Law (J.D., 1960)Editor, The George Washington University Law Review (1959-1960)
Columbia University (B.A., 1955, B.S., Chemical Engineering, 1956)
Professional Admissions
State of Virginia 1960District of Columbia 1960
United States Patent and Trademark Office (Reg. No. 20,008)
Publications
"The Written Description Requirements of 35 U.S.C. §112 and Ariad Pharms. Inc. v. Eli Lilly & Co.," IP Law Alert, February 24, 2010
Quotes/Interviews
Quoted in "Knowledge Is Not Priceless," NJBiz, September 27, 2004
Speaking Engagements
Speaker, American Conference Institute Program, Pharma and Biotech - In-Licensing, Co-Development and Co-Promotion Agreements, October 22, 2002Speaker, The Legal and Business Forum for Industry and Research Institution Collaborative Relationships, Maximizing the Profit Potential of the Pharma/Biotech and Research Institution Relationship, November 30, 2001
Speaker, 3rd National Legal and Regulatory Forum for Patenting Genomics, Proteomics, and Complex Biotech, November 6, 2001
Legal Employment Background
Hoffman-La Roche, Inc., Associate Patent Counsel and Assistant Secretary (1966-2001)Blum Moscovitz Friedman and Kaplan (1964-1966)
NOPCO Chemical Company (1961-1964)
United States Patent Examiner (1956-1961)

William H. Epstein
Counsel
Intellectual Property
Contact Information
One Gateway CenterNewark, NJ 07102-5310
Direct: 973-596-4607
Fax: 973-639-6397
wepstein @gibbonslaw.com
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