John A. Zurawski

Partner

zurawskij@ballardspahr.com
Tel 215.864.8855
Fax 215.864.8999
Philadelphia

John Zurawski is a licensed patent attorney who combines his patent prosecution background with deep experience in corporate and contract matters to help clients maximize the value and success of their businesses. John provides strategic guidance on business and legal issues, with an emphasis on intellectual property procurement and technology development in the life science and biotechnology industries. John works closely with startups and entrepreneurs, supporting these emerging businesses with 360-degree guidance throughout their commercial lifecycle—including the critical period between formation and early-stage financing.

John routinely prepares, prosecutes, and manages complex patent portfolios focused on biotechnology, molecular biology, immunology, gene therapy, virology, pharmaceuticals, medical devices, diagnostics, stem cells, and biosensors. He provides patentability opinions and performs portfolio diligence for acquisition and sale-side transactions. In addition, John prepares and negotiates agreements for both in- and out-licensing, sponsored research, joint development, clinical research agreements, and other technology-specific commercial contracts.

John advises clients on securing, protecting, commercializing, and managing IP assets, with concentrated experience in exclusivity of patents and regulatory designations for life science companies.

John's clients include higher education institutions, pharmaceutical companies, and large equipment and vehicle manufacturers. He represents life sciences companies in preclinical and clinical development of diagnostics, therapeutic products, and medical devices. John has deep, direct experience working with higher education clients to protect and manage their IP assets. He teams with university tech transfer and licensing offices to prosecute, license, and manage portfolios of patents in the mechanical, biological, and chemical arts. John is active with the Association of University Technology Managers (AUTM), serving as Chair of the organization's Eastern Regional Committee.

Prior to attending law school, John worked as a laboratory scientist at the University of Pennsylvania, Drexel University, and a DNA vaccine development company, Apollon, Inc., where he successfully co-authored funded grant applications and journal articles related to therapeutics to treat cancer and HIV infection.

Representative Matters

Mr. Zurawski's experience includes representing:

  • A world-renowned, research institution in preparation, prosecution, and management of patent portfolios for a gene-editing platform technology.
  • Executive management of an emerging biotech company on numerous corporate matters, including in- and out- technology licensing, preparing material transfer and sponsored research agreements, and general contract negotiations
  • Several startup businesses in the health IT, biotechnology, and pharmaceuticals industries in drafting, counseling, and negotiating initial license agreements from academic institutions
  • A large pharmaceutical company for due diligence review of the IP portfolio of a mid-sized pharmaceutical company in a multimillion dollar acquisition
  • A distributor of molecular biology kits in the biotechnology industry in drafting a non-infringement opinion
  • The developers of a clinical stage product in extensive counseling, due diligence, prosecution, and pre-litigation strategy of their lead asset
  • A software company in counseling, enforcement, and support for litigation of patent rights
  • An emerging pharmaceutical company for negotiation of a license from a large pharmaceutical company for IP rights covering a lead compound and for strategic IP counseling to protect further product development

Judicial Clerkships

Hon. John T.J. Kelly, Jr., Commonwealth of Pennsylvania Superior Court, Philadelphia, Summer 2004

Professional Activities

Association of University Technology Managers (AUTM), Chair, Eastern Regional Committee

Pennsylvania Bar Association

Life Sciences Pennsylvania

Licensing Executive Society

Recognitions & Accomplishments

Pennsylvania Super Lawyers, Rising Star, 2010, 2013, 2015-2017

Publications

Co-author, "Proteins, Recognition Networks, and Macromolecular Biosensing," Journal of Molecular Recognition, 17(3): 198-208, May-June 2003

Co-author, "Chain Reaction Cloning: A One Step Method for Directional Ligation of Multiple DNA Fragments," Gene 243: (1-2) February 8, 2000

Speaking Engagements

"Fireside Chat with the Deputy Commissioner for Patents," USPTO AUTM Eastern Regional Meeting, September 14, 2018

"Life Science Licensing and Intellectual Property Exclusivity," Freedom From Cancer Startup Challenge, February 26, 2018

"Entrepreneurship in Academia: How to Acquire and Commercialize Intellectual Property Assets," University of California, Merced, September 24, 2017

"Patentability and Invalidity Review of Design Patents," Greater Philadelphia Chapter, Association of Corporate Counsel, January 26, 2017

"Intellectual Property: Maximizing Value and for Healthcare and Life Science Companies," Healthcare Entrepreneurship, IP Module, The Wharton School at the University of Pennsylvania, February 2016

Villanova University School of Law (J.D. 2006)
Associate Editor, Villanova Law Review
President, Student Bar Association

University of Pennsylvania (M. Biotech, Molecular Biology, 2000)

University of Pennsylvania (B.A., Molecular Biology, 1999)

Pennsylvania

New Jersey

U.S. Patent and Trademark Office