The Innovation Firm

Eric M. Balicky, Ph.D.

Practice Areas

Technologies

Education

  • Allegheny College, B.S. in Biology, magna cum laude
  • Dartmouth College, Ph.D. in Molecular and Cellular Biology
  • Boston College Law School, J.D.

Professional Associations

  • Massachusetts Bar Association
  • New Hampshire Bar Association
  • Association of University Technology Managers
  • Boston Patent Law Association
  • Dartmouth Lawyers Association

Eric M. Balicky, Ph.D.

Eric M. Balicky, Ph.D. Attorney

Eric M. Balicky, Ph.D.

Principal
Concord office
978.341.0036

For more than 13 years, Eric has represented a diverse array of clients in IP-related matters, with an emphasis on strategic IP counseling, patent preparation and prosecution, IP due diligence and legal opinions.  Eric also has substantial experience in patent litigation, providing a perspective that informs and enhances his other practice areas.  Eric has been named a Rising Star in Intellectual Property Law by Super Lawyers®.

With a technical background in molecular biology and biochemistry, Eric has represented both corporate and university clients in the biotechnology, pharmaceutical, bioprocessing and medical device areas.  Representative areas of technical focus include:

  • therapeutic antibodies and other protein-based therapeutics,
  • cancer detection, diagnosis and therapy,
  • microRNAs and other non-coding RNAs,
  • genome editing techniques, including CRISPR,
  • vaccines and vaccine production,
  • small molecule therapeutics, including enantiomers/diastereomers,
  • immunological detection methods and assays,
  • in situ hybridization probes and techniques,
  • synthetic peptide compounds,
  • PCR amplification and decontamination techniques,
  • bioinformatics, including DNA sequencing methods and algorithms,
  • protein engineering and redesign,
  • natural product synthesis in plants and other hosts,
  • transgenic mammals and plants,
  • dialysis methods, systems and devices,
  • aquaculture products and methods,
  • filtration systems and processes, including tangential flow filtration.

Eric manages prosecution of several large patent portfolios, including multiple patent families with worldwide filings.  He has prepared invalidity, non-infringement and freedom-to-operate opinions to assist his clients with critical strategy decisions.  Eric also has substantial experience conducting patent appeals before the Patent Trial and Appeal Board (PTAB) at the USPTO, and has obtained multiple PTAB decisions reversing the Office on all contested grounds of rejection.  He has evaluated and conducted due diligence investigations of third party IP and defended his clients’ IP in numerous due diligence investigations.  In addition, Eric represented both plaintiff and defendant clients in patent infringement litigation.  Eric’s international experience includes working with European counsel to defend a client’s patents in two opposition proceedings before the European Patent Office.  For another client, Eric persuaded the USPTO to reject a non-compliant third party preissuance submission in a patent application.  Eric’s experience also includes prosecuting reissue patent, design patent and trademark applications.

Prior to joining the firm, Eric conducted his dissertation research in chromosome biology, focusing on meiotic chromosome segregation. His research, which utilized Drosophila melanogaster as a model genetic system, incorporated molecular, genetic, cytological and biochemical techniques to characterize the role of the Orientation Disruptor (ORD) and dRING proteins in promoting normal sister-chromatid cohesion and chromosome condensation during meiosis.  He was the recipient of a National Institutes of Health (NIH) training grant award as a graduate student and, as an undergraduate, received a National Science Foundation award supporting a summer research internship performed at Carnegie Mellon University.

Eric has co-authored several published articles and abstracts.  His research articles have appeared in the journals Molecular Biology of the Cell, Chromosoma, and Current Biology

Bar Admissions

  • U.S. Patent and Trademark Office
  • Massachusetts
  • New Hampshire
  • U.S. District Court, District of New Hampshire
  • Managed prosecution of several large patent estates, including multiple patent families with worldwide filings,
  • Prepared invalidity, non-infringement and freedom-to-operate opinions,
  • Conducted several patent appeals before the Patent Trial and Appeal Board (PTAB) at the USPTO, resulting in multiple PTAB decisions reversing the Office on all contested grounds of rejection,
  • Evaluated and conducted due diligence investigations of third party IP,
  • Defended client IP in numerous due diligence investigations,
  • Represented both plaintiff and defendant clients in patent infringement litigation,
  • Worked with European counsel to defend client patents in two opposition proceedings before the European Patent Office, each involving multiple opponents,
  • Persuaded USPTO to reject a non-compliant third party preissuance submission in a client patent application,
  • Prosecuted reissue patent, design patent and trademark applications.

Press Releases

  • Firm Elects Eric M. Balicky, Ph.D. and Lawrence P. Cogswell III, Ph.D. as Principals more
Biography

For more than 13 years, Eric has represented a diverse array of clients in IP-related matters, with an emphasis on strategic IP counseling, patent preparation and prosecution, IP due diligence and legal opinions.  Eric also has substantial experience in patent litigation, providing a perspective that informs and enhances his other practice areas.  Eric has been named a Rising Star in Intellectual Property Law by Super Lawyers®.

With a technical background in molecular biology and biochemistry, Eric has represented both corporate and university clients in the biotechnology, pharmaceutical, bioprocessing and medical device areas.  Representative areas of technical focus include:

  • therapeutic antibodies and other protein-based therapeutics,
  • cancer detection, diagnosis and therapy,
  • microRNAs and other non-coding RNAs,
  • genome editing techniques, including CRISPR,
  • vaccines and vaccine production,
  • small molecule therapeutics, including enantiomers/diastereomers,
  • immunological detection methods and assays,
  • in situ hybridization probes and techniques,
  • synthetic peptide compounds,
  • PCR amplification and decontamination techniques,
  • bioinformatics, including DNA sequencing methods and algorithms,
  • protein engineering and redesign,
  • natural product synthesis in plants and other hosts,
  • transgenic mammals and plants,
  • dialysis methods, systems and devices,
  • aquaculture products and methods,
  • filtration systems and processes, including tangential flow filtration.

Eric manages prosecution of several large patent portfolios, including multiple patent families with worldwide filings.  He has prepared invalidity, non-infringement and freedom-to-operate opinions to assist his clients with critical strategy decisions.  Eric also has substantial experience conducting patent appeals before the Patent Trial and Appeal Board (PTAB) at the USPTO, and has obtained multiple PTAB decisions reversing the Office on all contested grounds of rejection.  He has evaluated and conducted due diligence investigations of third party IP and defended his clients’ IP in numerous due diligence investigations.  In addition, Eric represented both plaintiff and defendant clients in patent infringement litigation.  Eric’s international experience includes working with European counsel to defend a client’s patents in two opposition proceedings before the European Patent Office.  For another client, Eric persuaded the USPTO to reject a non-compliant third party preissuance submission in a patent application.  Eric’s experience also includes prosecuting reissue patent, design patent and trademark applications.

Prior to joining the firm, Eric conducted his dissertation research in chromosome biology, focusing on meiotic chromosome segregation. His research, which utilized Drosophila melanogaster as a model genetic system, incorporated molecular, genetic, cytological and biochemical techniques to characterize the role of the Orientation Disruptor (ORD) and dRING proteins in promoting normal sister-chromatid cohesion and chromosome condensation during meiosis.  He was the recipient of a National Institutes of Health (NIH) training grant award as a graduate student and, as an undergraduate, received a National Science Foundation award supporting a summer research internship performed at Carnegie Mellon University.

Eric has co-authored several published articles and abstracts.  His research articles have appeared in the journals Molecular Biology of the Cell, Chromosoma, and Current Biology

Representative Experience
  • Managed prosecution of several large patent estates, including multiple patent families with worldwide filings,
  • Prepared invalidity, non-infringement and freedom-to-operate opinions,
  • Conducted several patent appeals before the Patent Trial and Appeal Board (PTAB) at the USPTO, resulting in multiple PTAB decisions reversing the Office on all contested grounds of rejection,
  • Evaluated and conducted due diligence investigations of third party IP,
  • Defended client IP in numerous due diligence investigations,
  • Represented both plaintiff and defendant clients in patent infringement litigation,
  • Worked with European counsel to defend client patents in two opposition proceedings before the European Patent Office, each involving multiple opponents,
  • Persuaded USPTO to reject a non-compliant third party preissuance submission in a client patent application,
  • Prosecuted reissue patent, design patent and trademark applications.
Education
  • Allegheny College, B.S. in Biology, magna cum laude
  • Dartmouth College, Ph.D. in Molecular and Cellular Biology
  • Boston College Law School, J.D.
Speaking Engagements
Professional Associations
  • Massachusetts Bar Association
  • New Hampshire Bar Association
  • Association of University Technology Managers
  • Boston Patent Law Association
  • Dartmouth Lawyers Association
News
  • Firm Elects Eric M. Balicky, Ph.D. and Lawrence P. Cogswell III, Ph.D. as Principals more
Bar Admissions
  • U.S. Patent and Trademark Office
  • Massachusetts
  • New Hampshire
  • U.S. District Court, District of New Hampshire

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