Jonathan Roses provides an array of advice to clients practicing in the fields of chemistry, pharmaceuticals, biotechnology, materials science and consumer products, focusing on patent prosecution and litigation. He has given counsel on the availability of post-grant proceedings under the American Invents Act, including advising and representing both petitioners and patent owners in inter partes review (IPR) proceedings. Mr. Roses has prosecuted patent applications, including both utility and design applications, for life sciences, university and consumer products clients both internationally and in the United States, and has managed client portfolios containing several hundred applications. In the pharmaceutical area, he has represented clients in several Hatch-Waxman Abbreviated New Drug Application (ANDA) litigations related to several blockbuster drugs and guided ex-US counsel in co-pending foreign counterpart litigation. Mr. Roses has also worked with domestic and foreign pharmaceutical, medical device and consumer products companies on matters related to intellectual property due diligence, antitrust law and regulatory matters involving the United States Food and Drug Administration (FDA), including the submission of New Drug Applications (NDAs) and listing of patents on the FDA's Orange Book.
Mr. Roses has also advised both for-profit and not-for-profit clients on issues relating to food allergen law and animal rights, and has assisted not-for-profits in securing trademark and copyright protection for their works of authorship, goods, services and brands.
Mr. Roses is admitted to practice before the Supreme Court of the United States, the United States District Court for the District of Massachusetts, the United States Court of Appeals for the First Circuit, the United States Court of Appeals for the Federal Circuit, and is a registered patent attorney with the United States Patent and Trademark Office.
Community InvolvementMr. Roses has volunteered at Pine Street Inn, a Boston-based homeless shelter and outreach organization. He has also volunteered for Community Servings, a not-for-profit food and nutrition program providing services throughout Massachusetts to individuals and families living with critical and chronic illnesses.
Professional ActivitiesMr. Roses is a member of the Boston Bar Association, the Boston Patent Law Association, the Intellectual Property Law section of the American Bar Association, the American Chemical Society and the American Institute of Chemists. He served on the Boston Bar Association's New Lawyers in Transition committee from 2009 to 2012.
During law school, Mr. Roses worked as a patent associate at BioChemics, Inc., in Danvers, Massachusetts, where he researched and drafted patent applications for drug delivery systems. He was also the President of Boston College's Intellectual Property and Technology Forum (IPTF), a student-run organization and online legal journal, from 2008 to 2009. Mr. Roses was the recipient of the Rita Q. and Robert Tobin Scholarship for Intellectual Property Law.
Prior to attending law school, Mr. Roses was a senior research associate at Millennium Pharmaceuticals, Inc. in Cambridge, Massachusetts from 2002 to 2006, where, in addition to his work as a medicinal chemist, he aided in the preparation of patent applications. From 2000 to 2002, Mr. Roses was a medicinal chemist at Ariad Pharmaceuticals, Inc., also in Cambridge.
During his undergraduate studies, Mr. Roses was a research assistant in the Chemistry Department at Connecticut College, where his research focused on the synthesis and derivatization of Phorbol, a fused polycyclic natural product with anti-cancer and anti-HIV properties. Mr. Roses presented this data at a national meeting of the American Chemical Society. He was also the recipient of the American Institute of Chemists Award, the Paul Abel Schwartz Memorial Prize and a Pfizer Prepare Fellowship.
- Represented innovator pharmaceutical companies in ANDA and 505(b)(2) NDA patent infringement litigations involving Paragraph IV challenges from generic drug companies regarding multiple blockbuster drugs
- Managed a pharmaceutical company's IP portfolio of multiple antibiotic products that comprised of more than 400 applications and patents worldwide, including those related to a Phase III clinical candidate; provided counsel in preparation for United States and European regulatory approval and commercial launch
- Advised a medical device company on launch of multiple products in various countries around the world, including provision of advice on freedom-to-operate and patentability analyses
- Represented an innovator pharmaceutical company in a Federal Trade Commission investigation as well as in federal antitrust litigation relating to drug patent settlement agreements involving a blockbuster drug
- Assisted a medical device client in preparation for an inter partes review petition to challenge a competitor's issued US patent
- Performed pre-litigation IP due diligence for a leading pharmaceutical company, analyzing the company's Orange Book-listed patents covering its marketed drug to prepare for potential future Hatch-Waxman ANDA litigation
- Aided a pro bono foundation in executing agreements and securing trademark protection for a historic recreation of a pre-prohibition craft lager beer originally developed by the brewer whose legacy the foundation seeks to preserve
- Performed IP due diligence of a sporting goods manufacturer's worldwide patent portfolio in connection with a client's contemplated private equity investment
- Performed IP due diligence for a leading European specialty pharmaceutical company for a potential in-licensing of a drug product for treating a women's health disorder, including freedom-to-operate, patentability and market exclusivity analyses
- Prosecuted an oncology company's worldwide patent portfolio including more than 130 US and foreign counterpart applications related to a Phase II clinical candidate
- Prosecuted a specialty pharmaceutical company's patent portfolio in the area of novel delivery systems, which included more than 50 US applications and their associated foreign applications
- Researched, wrote and filed amicus brief to the Massachusetts Supreme Judicial Court on behalf of an animal rights organization to successfully argue that the emergency exception to the warrant requirement extends to the protection of animals
Honors & Awards
- Named a "Massachusetts Super Lawyers Rising Star" in 2015, 2016 and 2017 in the area of intellectual property
Insights & News
JD, Boston College Law School, 2009cum laude
BA, Chemistry, Connecticut College, 2000American Chemical Society Certified
- Certificate, Copyright, Harvard Law School CopyrightX Program, 2015
United States Patent and Trademark Office
United States Supreme Court