Catherine M. Polizzi

Intellectual versatility combined with incisive, pragmatic counseling and business acumen has become the hallmark of Dr. Catherine Polizzi's practice.

Dr. Polizzi helps emerging and established companies through the challenging process of obtaining patents, providing strategic, effective portfolio counseling and management. She develops valuable, strategic portfolios around breakthrough therapies in a variety of areas, including cancer, autoimmune diseases, inflammatory diseases, infectious diseases, cardiovascular disease, metabolic disorders, and neurodegenerative diseases such as Alzheimer’s Disease. She also has significant experience in a wide spectrum of technology areas, including regenerative medicine, biologics (such as antibodies and polypeptides, nucleic acids, personalized medicine, diagnostics, drug formulation technologies, drug screening systems, amplification technologies, nutraceuticals, nanotechnology, spectroscopy), and organic chemistry including small molecule drugs. Her unique background, her ability to integrate IP with a given business model to translate to meaningful risk assessment and advice, and her highly effective communication skills in critical settings such as R&D, all phases of product development, and investment contexts, enable Dr. Polizzi to provide effective, creative solutions to the significant challenges often faced by clients.

Dr. Polizzi's practice also includes due diligence evaluation and counseling in the context of venture investment assessments, as well as in connection with public and private financing, spin-offs, partnerships, and mergers and acquisitions. Representative transactions resulting from Dr. Polizzi’s leadership include Celgene Corporation’s $2.9 billion acquisition of client Abraxis BioScience; over $225 million investment by Pfizer in client Medivation, Inc.; Pfizer’s acquisition of client Rinat Neuroscience; and TOPICA Pharmaceuticals’ $27 million Series B financing.

In addition to helping create value and commercialize her clients’ technologies, Dr. Polizzi devises strategies and defenses to fortify their patents in the event of legal challenges by competitors. Accordingly, she renders advice on all aspects of patent positioning, including opinions on patentability, validity, freedom of operation, infringement, and competitor IP evaluation. She is also often engaged in third-party challenges such as oppositions, reexaminations, and patent interference, as well as licensing and litigation matters. On behalf of clients, Dr. Polizzi has also successfully obtained patent term extensions under Hatch-Waxman. For many of her smaller, venture-backed clients, she frequently serves as the equivalent of in-house patent counsel.

Dr. Polizzi is patent counsel to numerous publicly traded and privately held companies in the therapeutics industry.

Genentech, the world’s first and most successful biotechnology company, relies on Dr. Polizzi’s strategic patent counseling and prosecution services for its most difficult and challenging patent matters. Her work involves developing overall patent strategy, patent application drafting, and prosecution for key technologies. Her high-value work for Genentech also includes strategic assessment of key and novel technologies.

Dr. Polizzi has worked with Abraxis BioScience for a number of years on patent strategy, drafting, and prosecution to help the company develop its highly successful cancer drug, Abraxane, and, in the process, become a leader in the biopharmaceuticals industry. Dr. Polizzi counseled the company through its $2.9 billion acquisition by Celgene Corporation, including providing significant IP strategy and due diligence counseling. This IP platform was a major component of the valuation of the company. Dr. Polizzi now also represents Celgene as its counsel for the Abraxis patent portfolio and continues to work closely with Dr. Patrick Soon-Shiong, the billionaire philanthropist founder of Abraxis.

Other representative clients include St. Jude Children’s Research Hospital, the Buck Institute for Research on Aging, University of California, Boston University, and clinical-stage biopharmaceutical companies such as Dynavax Technologies and Medivation, Inc.

Good to know

Areas of Practice 1) Intellectual Property, 2) Patent Counseling + Prosecution, 3) IP Due Diligence and 4) Life Sciences
Law School Stanford Law School (J.D., 1994)
Education University of Mississippi (B.A., 1976), University of California, Santa Barbara (M.A., 1978), University of California, Santa Barbara (Ph.D., 1990)
Bar Member / Association State Bar Of California
Most recent firm Morrison & Foerster LLP
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