Alexander H. Spiegler

  • New York

Alex’s practice focuses on intellectual property with an emphasis on biotechnology patents.

Alex is a registered patent attorney whose practice focuses on all aspects of patent law. Alex has extensive experience with the US Patent & Trademark Office, specializing in patent prosecution and post-grant proceedings (e.g., inter partes reviews), in a wide variety of technologies, including biotechnology, agricultural technology, and pharmaceuticals. Alex also frequently provides advice on claim construction, infringement and validity issues in litigation. 
Before graduating from law school, Alex clerked at the firm from 2005 - 2006. From 2000 to 2004, he was a Biotechnology Patent Examiner at the US Patent and Trademark Office. 

Relevant Experience

  • Prepared and prosecuted patent applications in the biotechnology, agricultural, food science and chemical arts, including inventions related to plants, nucleic acids, proteins, antibodies, pharmaceuticals, enzymes, mulches, bacteriophages, methods of treatment, methods of diagnosis and detection, and other methods of use.
  • Conducts due diligence, freedom-to-operate, validity and patentability analyses, and prepare formal legal opinions reflecting conclusions of such analyses.
  • Prepared Paragraph IV Certification letters.
  • Represented lawn care company in litigation and patent office proceedings. Successfully obtained summary judgment on competitor’s trade secret claim. Obtained favorable Markman ruling against competitors’ patents, leading to dismissal of the patent infringement suit. Successfully provoked inter partes reviews and reexaminations against competitors’ patents, and obtained decisions that competitors’ patents are unpatentable.
  • Represented inventor against reexamination of patent directed to methods for treating achondroplasia. Reexamination Certificate confirmed patentability of all original claims. Second Reexamination Request denied.
  • Represented agricultural biotechnology company against reexamination of patent directed to methods of treating genetically modified plant with an herbicide. Reexamination Certificate issued with claims covering commercially important subject matter.
  • Represented life sciences company with patents covering DNA sequencing technology. Obtained favorable Markman ruling, which was affirmed on appeal.
  • Represented pharmaceutical company in a Hatch-Waxman litigation brought against it by owner of patents covering leading attention hyperactivity disorder drug.
  • Represented life sciences company in patent office proceedings (interferences and reexaminations) relating to nucleic acid (e.g., sequencing, amplification) technology.
  • Represented biotechnology company in interference relating to nucleic acid hybridization technology.
  • Pro bono work includes filing a writ of certiorari in the United States Supreme Court for an engineer seeking to reinstate his patent for improved automobile engines.