Kenneth H. Sonnenfeld, Ph.D.

Partner

sonnenfeldk@ballardspahr.com
Tel 646.346.8050
Fax 212.223.1942
New York

Kenneth Sonnenfeld is a licensed patent attorney with nearly 30 years of experience as intellectual property counsel to biotechnology and pharmaceutical industry clients ranging from domestic startups to multinational corporations.

Ken’s background includes a doctorate in pharmacology, which helps him understand and advise effectively on the complex technical issues that arise in biotech patent matters. Prior to entering the legal profession, he conducted cancer therapy research in academic medicine on neuronal development and cancer. Ken counsels clients on a range of inter-party issues, including due diligence, litigation, foreign oppositions, and licensing. He supervises complex, strategic patent prosecution before the U.S. Patent and Trademark Office and oversees foreign prosecution.

Ken is nationally recognized as a leading patent lawyer in biotechnology and pharmaceuticals and has been listed by Chambers USA, Legal 500, and IAM Patent 1000—a leading guide for patent professionals. He speaks regularly at biotechnology patent law conferences.

Representative Matters

  • National Genetics Institute and Baxter International, Inc. v. Talecris Biotherapeutics, Inc. (represented Baxter in case involving pooling of blood/plasma donations; after successful reexamination of asserted claims in USPTO, the case settled.)
  • Daiichi Sankyo Company, Ltd. v. Michelle K. Lee, Director, United States Patent and Trademark Office (represented Daiichi Sankyo in matter seeking correction of patent term)
  • Genentech vs. Novo Nordisk (defended Novo Nordisk in action involving recombinant expression of human growth hormone)
  • Conducted IP diligence and negotiated IP aspects of transaction agreements for acquisition of multiple royalty streams ranging in value up to several hundreds of millions of dollars
  • Served as Hatch-Waxman litigation counsel to Alfa Wassermann (now Alfasigma), working in conjunction with trial counsel from another firm asserting patents protecting Xifaxin® against Actavis (Teva)

Recognitions & Accomplishments

LMG Life Sciences Star (2019)

IAM Patent 1000 Guide, top patent lawyer (2012-2020)

Chambers USA, Intellectual Property: Patent (2016-2019)

Managing Intellectual Property, IP Star (2018-2020)

Legal 500, Intellectual Property: Patent Prosecution – utility and design patents (2015)

Publications

Co-author, “Bilski and Beyond: The Impact of the Bilski Decision for Biotech” BioWorld. July 22, 2010.

Author, “US Biotech Patent Law - Shifting Sands.” Life Sciences Law & Business, Issue 5, page 12, December 2004/January 2005.

Author, “US Courts Get Tough On Research Patents.” Scrip Magazine, Issue 132, page 29, March 2004.

Author, “Nerve Growth Factor Receptors on Dissociated Neurofibroma Schwann-like Cells,” Journal of Cancer Research, March 1986

Speaking Engagements

Speaker, “Digging Into the Weeds of the Supreme Court’s Funk Brothers Case to Dig out of 101 Ineligibility,” New Jersey Intellectual Property Law Association, April 30, 2019

Speaker, “Navigating Hurdles of Patentability: Subject Matter Eligibility Under the USPTO December 16, 2014 Guidance” Center for International Legal Studies: The Protection of Intellectual Property Rights, January 25-30, 2015, Kitzbuhel, Austria

Invited speaker, USPTO 101 Forum, May 9, 2014

Speaker, “Bilski and its Impact on Life Sciences Diagnostic Patents,” Center for International Legal Studies: Global IP Strategies after the Crises, February 3, 2011, Kitzbuhel, Austria.

Speaker, “Future of Medicine Conference 2009 - Open Source Panel,” participant on panel discussion to discuss issues of open source in biotechnology held at MaRS Discovery District, Canada.

Board Memberships

Brain & Behavior Research Foundation

Fordham Law School Neuroscience Law Center

Fordham University School of Law (J.D. 1990)

Columbia University (Ph.D., pharmacology, 1983)

Columbia University (M.Phil., 1979)

Columbia University (M.A., 1978)

Kenyon College (B.A., 1976)

New York

Massachusetts

U.S. Patent and Trademark Office

U.S. Court of Appeals for the Federal Circuit

U.S. Supreme Court