Barton W. Giddings, Ph.D

Barton W. Giddings, Ph.D

Partner
Salt Lake City, UT
Overview

About Bart

Bart Giddings counsels biotechnology, pharmaceutical, bioenergy and medical device clients on intellectual property matters, including the strategic creation and management of patent portfolios. He has significant experience with patent issues unique to biopharmaceuticals and small molecule drug products, genetic technology, medical diagnostic testing and biofuels. His practice includes transactions involving intellectual property assets, competitive intelligence, and Hatch-Waxman issues. Bart was previously Chief Patent Counsel at NPS Pharmaceuticals.

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Experience

Experience

Patent Portfolio Creation and Management

  • Managed the development and prosecution of a biopharmaceutical client's portfolio of more than 1,000 issued and pending U.S. and foreign patents and applications.
  • Prosecuted several hundred U.S. and foreign patent applications to issuance. Bart has conducted or supervised numerous successful interviews with U.S. and European examiners that resulted in allowance.
  • Managed the intellectual property aspects of several collaborations with major pharmaceutical companies and developed strategies for protecting IP resulting from such collaborations.
  • Developed exclusivity strategies, including filing for patent term extension and supplementary protection certificates for three approved drug products.

Intellectual Property Transactions

  • Negotiated, drafted and conducted due diligence for a variety of agreements, including intellectual property license and sales agreements. 
  • Directed the intellectual property aspects of several royalty monetization deals.
  • Led IP due diligence efforts for several public and private financings, mergers and acquisitions, including the $5.2 billion sale of a publicly traded biopharmaceutical company.

Intellectual Property Analysis

  • Advised clients on patent infringement litigation matters, including issues specific to Hatch-Waxman and research tool litigation.
  • Monitored competitors’ patents for clients and analyzed alternatives for challenging granted patents, including reexamination, litigation, and European oppositions.
  • Performed exclusivity and freedom to operate analyses for clients, including clearance searches related to marketed medical products and production of biofuels.
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Honors

Honors & Activities

Professional Honors & Activities

  • Included in The Best Lawyers in America© (currently: Patent Law), 2009-2018
  • Selected as one of "America's Leading Lawyers for Business" (Utah) by Chambers USA (currently: Intellectual Property), 2009-2017
  • AV Preeminent Peer Review Rated with Martindale-Hubbell®
  • Listed in Intellectual Asset Management's IAM Patent 1000 - The World's Leading Patent Practitioners, 2012-2016
  • Listed in Mountain States Super Lawyers® (Intellectual Property), 2007-2017
  • Listed in Mountain States Super Lawyers® in Top 100 Lawyers, 2015-2016
  • Included in Utah Business Legal Elite (Intellectual Property), listed since 2006
  • Adjunct professor, University of Utah, S.J. Quinney College of Law, 2003-2010
  • Chair, Intellectual Property Section, Utah State Bar, 2005-2006
  • Board of Trustees, Utah Life Sciences Association, 2000-2002 and 2005-2006

Civic Activities

  • Massachusetts Institute of Technology Educational Council, 2002-2011
  • University of Utah Honors College National Advisory Board, 2001-2016
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Insights & Presentations

Insights & Presentations

  • Panelist, “Examining the Ethics of Life Sciences Patents: Best Practices for Avoiding Inequitable Conduct,” American Conference Institute’s 15th Advanced Summit on Life Sciences Patents, New York City, New York, 2017
  • Webinar presenter, “Patent Litigation in the United States – Overview and Current Challenges,” The Chartered Institute of Patent Attorneys, London, UK, 2017
  • Panelist, “Ethics and Life Sciences IP,” American Conference Institute’s Advanced Summit on Life Sciences Patents, New York City, New York, 2016
  • Panelist, “Legal Ethics and Professional Responsibility: Avoiding Conflicts of Interest, Maintaining Confidentiality, and Other Special Concerns for the Biosimilars Space,” American Conference Institute’s 6th Annual Summit on Biosimilars, New York City, New York, 2015
  • Panelist, “Ethics and Life Sciences IP,” American Conference Institute’s Advanced Summit on Life Sciences Patents, New York City, New York, 2015
  • Presenter, “Overview of US Patent Litigation 2014,” The Chartered Institute of Patent Attorneys, London, UK, 2014
  • Presenter, “Ethics and Biopharmaceutical Intellectual Property,” American Conference Institute’s Pharmaceutical and Biotechnology Patent Life Cycles and Portfolio Strategies, New York City, New York, 2014
  • Instructor, “PTA-PTE Boot Camp: Basic Training in the Essentials of Patent Term Adjustment and Patent Term Restoration for Patent Lawyers Serving the Pharmaceutical, Biopharmaceutical, and Biotechnology Industries,” American Conference Institute’s Pharmaceutical and Biotechnology Patent Life Cycles and Portfolio Strategies, New York City, New York, 2014
  • Instructor, “PTA-PTE Boot Camp: Basic Training in the Essentials of Patent Term Adjustment and Patent Term Restoration for Patent Lawyers Serving the Biopharmaceutical Industry,” American Conference Institute’s Maximizing Pharmaceutical Patent Life Cycles, New York City, New York, 2012
  • Panelist, “Patent Term Adjustment and Patent Term Extensions Update: Strategies and Considerations for Small and Large Molecules,” American Conference Institute’s Maximizing Pharmaceutical Patent Life Cycles, New York City, New York, 2011
  • Presenter, “Electronic Laboratory Notebooks,” BioInnovations Gateway, Salt Lake City, Utah, 2011
  • Co-Presenter, “Bilski Round Two: What Is Patentable in Light of the Supreme Court's Recent Decision?,” Stoel Rives LLP, Salt Lake City, Utah, 2010
  • Instructor, “Patent Reexamination and Reissue Practice,” Patent Resources Group, Bonita Springs, Florida, 2010
  • Instructor, “Patent Reexamination and Reissue Practice,” Patent Resources Group, Las Vegas, Nevada, 2009
  • Instructor, “Patent Reexamination and Reissue Practice,” Patent Resources Group, Orlando, Florida, 2009
  • Presenter, “Hatch-Waxman, Drug Prices, and an Aging America,” Utah State Bar Annual Convention, Sun Valley, Idaho, 2007
  • Instructor, “The Master Class on New Strategies for Obtaining Pharmaceutical Patent Extensions,” American Conference Institute’s Maximizing Pharmaceutical Patent Life Cycles, San Francisco, California, 2007
  • Instructor, “Building and Managing Patent Portfolios in the Life Sciences,” Henry Stewart conference, San Francisco, California, 2005
  • Presenter, “New Developments in the Law on Patent Term Extensions,” Henry Stewart conference, Latest Thinking on Attacking/Defending Patent Rights in the U.S. Pharmaceutical Market, Washington, D.C., 2004



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