Brian E. Reese, PhD, MBA

Co-Chair - Patent and Intellectual Property

Dr. Brian Reese, co-chair of Choate’s Patent and Intellectual Property Practice Group, leverages his combination of technical, legal, and business expertise to provide unusually comprehensive and pragmatic counsel to clients in the life sciences industries. Brian helps clients navigate and position themselves within the marketplace, building exclusivity positions that embrace intellectual property rights, corporate agreements, and regulatory options. His creative and thoughtful approach explores sources of positioning that include supply chain management, product lifecycle, and competitive intelligence.

Advising clients on a unique mix of IP protection, transactions, and due diligence with particular focus on handling complex patent portfolios as well as managing IP programs, Brian helps clients create and monetize value for their most important assets, be it through direct product development or a licensing or other commercial transaction.

As a former stock analyst, Brian brings a unique perspective to his practice and understands many of the business realities that his clients face, as well as how intellectual property rights and corporate transactions can help them achieve their goals.

Brian’s clients include Biogen, Broadview Ventures, Carisma, GlycoEra, Innervace, NextPoint Therapeutics, SourceBio, Takeda/Shire, MPM Capital, and University of Maine.

Recognition

  • Best Lawyers: Ones to Watch
  • “Notable Practitioner” by Managing Intellectual Property (2024)
  • A World’s Leading Patent Practitioner by IAM Patent 1000 (2023-2024)
  • Boston Magazine Top Lawyer in Intellectual Property Rights (2022)
  • Former Massachusetts Super Lawyers Rising Star
  • The Legal 500 (2023-2024)
  • Massachusetts Super Lawyers

Representative Engagements

Strategic Transactions

  • Extensive experience negotiating and drafting IP-related agreements, particularly including license agreements, sponsored research agreements, and research & collaboration agreements.
  • Provides IP counsel in support of financing transactions including Series A and B fundraising, collaborations, mergers, and acquisitions.
  • Strategic counseling of corporate clients with regard to monetization of non-core IP assets including via outlicensing and partnering, including packaging of assets and potential for multi-tiered transactions.
  • Performs diligence reviews of target companies or assets on behalf of investors or acquirers.

 

Market Analysis and Competitive Surveillance

  • Designs and implements competitive surveillance programs to assist clients in navigating an ever changing competitive environment, allowing client to be aware of not only competitive threats, but also licensing and partnering opportunities.
  • Conducts ongoing landscape and freedom-to-operate analyses and provides strategic counseling to life sciences companies looking to enter or position themselves in complex IP environments.
  • Provides portfolio assessments to companies or institutions interested in presenting themselves to investors, partners, or acquirers.


Prosecution and Portfolio Management

  • Advises clients from startups to multinational corporations, and those who invest in or found them, on intellectual property portfolio strategy, including patent strategy and portfolio management.
  • Implements IP strategy, including by preparing and prosecuting patent filings in therapeutic, diagnostic, and device spaces. Particular experience in cell and gene therapies, agricultural biotech, microbiome, diagnostics, biocompatible materials and biologically relevant materials.

Publications and Presentations

  • “Intellectual Property Boot Camp,” co-presenter, University of Maine From Research to Real World Commercialization Series, April 2024
  • “Small Changes, Big Opportunity: Nanotechnology and Intellectual Property Law,” co-author, The SciTech Lawyer, Fall 2019
  • Routes to Exclusivity in Cell-Based Therapy Development,” co-author, Pharmaceutical Executive, August 2019
  • “IP and Preparing for Due Diligence,” speaker, The Road from Nanomedicine to Precision Medicine (BAWA Biotechnology Consulting)
  • "Genetic Engineering and Crops: The CRISPR Conundrum," co-author, Genetic Engineering & Biotechnology News
  • “American Bar Association Session on Science and Technology Law,” moderator, BAWA Biotechnology Consulting, LLC's Current Issues in Medicine, Biotech and Pharma
  • "An Intellectual Property Primer for Nanomedical Researchers and Engineers," chapter author and assistant editor, Handbook of Clinical Nanomedicine: Law, Business, Regulation, Safety and Risk
  • “Why Patent Quality Matters,” author, Patent Quality Connection.
  • “Using fMRI as a Lie-Detector – Are We Lying to Ourselves?,” author, Albany Law Journal of Science and Technology.
  • “Memory-altering Drugs: Shifting the Paradigm of Informed Consent,” co-author, American Journal of Bioethics
  • “Elucidation of Stannin Function Using Microarray Analysis: Implications for Cell Cycle Control,” co-author, Gene Expression
  • “Functional and Structural Properties of Stannin: Roles in Cellular Growth, Selective Toxicity, and Mitochondrial Responses to Injury,” co-author, Journal of Cellular Biochemistry
  • “Protein Kinase C Epsilon Regulates Tumor Necrosis Factor-Alpha-Induced Stannin Gene Expression,” co-author, Journal of Pharmacology and Experimental Therapeutics
  • “The Protein Stannin Binds 14-3-3zeta and Modulates Mitogen-Activated protein Kinase Signaling,” co-author, Brain Research Molecular Brain Research
  • “Stannin, a Protein That Localizes to Mitochondria, Sensitizes NIH-3T3 Cells to Trimethyltin and Dimethyltin Toxicity,” co-author, Molecular Pharmacology

Professional and Community Involvement

  • Co-Chair, Nanotechnology Committee of the American Bar Association’s Section of Science & Technology Law, 2015-2021.
  • Provides ongoing pro bono services to the Center for Women and Enterprise in Boston

Education & Credentials

Albany Law School
JD, 2009, magna cum laude

Pennsylvania State University
PhD, 2005, Integrative Biosciences: Neuroscience
MBA, 2003

State University of New York
BS, 2000

Admissions

Massachusetts

New York

Northern District of New York

U.S. Patent & Trademark Office

U.S. Court of Appeals, Second Circuit

Brian's Insights