Kevin E. Noonan

, Ph.D.

Overview

Kevin E. Noonan is co-Chair of MBHB’s Biotechnology and Pharmaceuticals Practice Group. Dr. Noonan is an experienced patent lawyer, molecular biologist and renowned thought leader in biotechnology and pharmaceutical patent law. Over the past 30 years, he has counseled some of the largest biotechnology and pharmaceutical companies in the world on intellectual property issues.

He helps these companies protect their innovations and advance business goals by developing effective patent portfolio strategies. His work includes helping companies develop global patent filing and prosecution strategies, evaluate litigation risks, and manage patent term extensions. Dr. Noonan also has successfully represented clients in numerous interference proceedings. He has filed amicus briefs in landmark cases involving pharmaceutical and biotechnology patent issues to district courts, the Federal Circuit and the U.S. Supreme Court.

Dr. Noonan is the co-founder of and regular contributor to Patent Docs, a website featuring news and commentary on patent law. He is a co-editor and contributing author of the book, “Claim Construction and the Federal Circuit,” and a contributing author of “Antitrust Issues in Intellectual Property Law.” He also regularly speaks about intellectual property issues at events around the world.

Prior to becoming an attorney, Dr. Noonan was a molecular biologist, earning a doctorate from Princeton University, and a National Cancer Institute postdoctoral fellow.

Education
  • Ph.D., Princeton University,

    Molecular Biology; Thesis: Genetic analysis of oncogenesis in mammalian cells; National Cancer Institute, Postdoctoral Fellowship

  • B.S., State University of New York,

    Biochemistry

  • J.D., The John Marshall Law School,

    Cum Laude

Bar Admissions
  • Massachusetts
  • Illinois
  • U.S. Patent & Trademark Office
Memberships
  • DePaul University College of Law
    • Adjunct Professor, Biotechnology Patent Law
  • The John Marshall Law School
    • Adjunct Professor
  • IIT Chicago-Kent College of Law
    • Adjunct Professor

Recognition

  • 2022 Leadership Recognition Award, Section 101 Task Force, American Bar Association IP Law Section
  • Best Lawyers in America (2007-2022 editions)
  • Best Lawyers in America 2021, 2017 and 2013 Chicago “Lawyer of the Year” in “Biotechnology Law and Life Sciences Practice”
  • IAM Patent 1000 (2013-2022 editions)
  • IAM Global Leaders Guide (2021 edition)
  • IAM Strategy 300 — The World’s Leading IP Strategists (2017-2018 editions)
  • Managing IP Stars (2018)
  • JD Supra Readers’ Choice Awards (2016-2021 editions)
  • LMG Life Sciences Stars (2019)

Experience

  • Managed and prosecuted multiple international patent portfolios across 45 countries for a Fortune 500 pharmaceutical company.
  • Coordinated global prosecution of more than a dozen portfolio families and hundreds of U.S. and national phase applications for a multinational company. As a result of this work, the company secured foundational patents for many key food components.
  • Prepared and prosecuted patent applications directed to pharmaceutical compounds and novel screening methods for multiple Fortune 500 companies.
  • Managed and prosecuted patent portfolios for a major research university’s life sciences-related inventions on stem cells, metabolomics, recombinant influenza virus and vaccines, among others.
  • Assisted in successful denial of an inter partes review petition institution decision for a global ingredient supplier conducting freedom to operate and patentability analyses.

Published Articles

Founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law.

“Personalized Medicine and Patient Privacy Concerns in the Telemedicine Age,” DePaul Journal of Health Care Law, 2018, Vol. 19, Issue 13.

“What’s in a Name: The FDA Tries to Decide Regarding Biosimilars,” Pharmaceutical Compliance Monitor, December 23, 2015.

Contributing author, Regenerative Medicine Ethics: Governing Research and Knowledge Practices (Hogan, L., ed), Springer Press 2014.

Contributing author, Claim Construction and the Federal Circuit, (The Intellectual Property Law Association of Chicago Litigation Committee, Manzo, E., ed.), West Publishing Co., 2007-2017.

Contributing author, Gene Patents and Personalized Cancer Care: Impact of the Myriad Case on Clinical Oncology, Journal of Clinical Oncology, July 20, 2013, Vol. 31 No. 21: 2743-2748.

“The latest on the gene patenting case Association for Molecular Pathology v. Myriad Genetics,” Westlaw Journal Intellectual Property, October 31, 2012, Vol. 19, Issue 14.

Contributing author, Annual Review of Intellectual Property Law Developments 2010, (ABA Section on Intellectual Property Law, Thomas, L., ed), American Bar Association Press, (multiple years).

“An antidote to the politics of the human gene patenting debate,” SCOTUS blog, February 6, 2013.

“The Supreme Court’s Prometheus Decision and Its Meaning for Diagnostic Method Claims,” Biotechnology Law Report, June 2012, Vol. 31, No. 3: 267-270.

“Federal Trade Commission Rejected in ‘Reverse Payment’ Suit,” CPI Antitrust Chronicle, June 2012 (2).

“FDA Issues Draft Guidelines for ‘Follow-on’ Biologic Drug Approval Pathway,” Pharmaceutical Compliance Monitor, April 9, 2012.

“Supreme Court Sets Limits on the Bayh-Dole Act in Stanford v. Roche”, BNA Life Science Law and Industry Report, July 1, 2011, p.1-3.

“Little Light Shed on Method Claims Patent-Eligibility in Assoc. Medical Pathol. v. U.S. PTO”, BNA Life Science Law and Industry Report, in press.

“Round One Goes to the ACLU: Association of Molecular Pathologists v. Myriad Genetics”, BNA Life Science Law and Industry Report, May 2010.

“Biotechnology Patenting: What You Need to Know”, BioLogical Quarterly, Winter/Spring 2010.

“Worldwatch Intellectual Property: Gene Patenting”, Financier Worldwide, October 2009.

“Worldwide Pharmaceutical Drug Pricing and Patent Rights: A Recipe for Disaster?”, Financier Worldwide, September 2009.

Kevin E. Noonan, Michael S. Greenfield, and Donald L. Zuhn, “Paradise Lost: The Uncertain Future of Research Tool Patents”, Intellectual Property & Technology Law Journal, March 2003.