AlexanderAkhiezer

Practice

Patent strategy and prosecution for technology at the intersection of physics, chemistry and biology.

A patent strategy for a new technology, comprising:

  1. (a)learning the science well enough to say what is actually new;
  2. (b)claiming it so the patent holds up in investor diligence and in a dispute; and
  3. (c)filing in the right places at the right time;

wherein the attorney holds a Ph.D. in biological and computational chemistry from MIT.

What I work on

Patent strategy and prosecution services

Five kinds of work, one standard: claims that match the science and the business.

  • Patent prosecutionDrafting and filing U.S. provisional, nonprovisional and PCT applications, then carrying them through examination in the United States and abroad. That includes responding to office actions, interviewing examiners, and adjusting claims as the product and the prior art come into focus.
  • Patent strategy and portfolio developmentDeciding what to file, in which countries and in what order, so the portfolio follows the product roadmap and the budget. For established portfolios this also means life-cycle management: continuations, dropping cases that no longer earn their maintenance fees, and filling gaps around new products.
  • LicensingPatent and technology licenses, including university licenses for spin-outs: field of use, sublicensing, diligence milestones and the other terms investors will read closely.
  • Infringement and validity opinionsWritten analysis of whether a product falls within someone else’s claims, and whether those claims would survive a challenge, built on claim construction and the prior art. Related reading: freedom to operate analysis.
  • IP in financings and acquisitionsDiligence on patent ownership, inventorship, chain of title and claim scope for investors and acquirers, and preparing a company’s own portfolio so it holds up when diligence starts. See what investors ask about your patents.

Who I work with

Based in Boston, working with clients across the United States and abroad. Patent practice before the USPTO is federal, so location is not a barrier.

  • Research universitiesTechnology transfer offices deciding which invention disclosures to file on and how to license them to startups or established companies.
  • Startups and spin-outsFounders filing their first applications, cleaning up ownership, and getting ready for a seed or Series A round.
  • Venture capital investorsFunds that want a clear, technical read on a target’s patents before they commit.
  • International companies and universitiesInnovators in Israel, Europe and Asia who need U.S. patent protection, whether filing first in the U.S., entering the U.S. national stage from a PCT application, or claiming priority from a foreign filing.
  • Public companiesR&D teams and in-house counsel managing portfolios across several technologies and jurisdictions.

How I work

The order matters: the science first, the filing last.

  1. Understand the invention

    We start with how the technology works and what your team has done that others have not. I read the data and the papers, and I ask the questions a skeptical examiner would ask.

  2. Decide what to protect

    Not everything is worth a patent. We choose what to file, where and when, with your business plan and next financing in view.

  3. Draft, file and prosecute

    I prepare the applications and carry them through examination in the United States and abroad, and I keep you informed of each deadline and decision.

Why the science comes first

A patent is only as strong as its claims, and the claims are only as good as the attorney’s understanding of the invention. In deep-tech fields, the difference between a broad, defensible claim and a narrow one often turns on technical details: which parameter actually drives performance, which version a competitor would build, and which data support the range you want to claim.

I am a Boston patent attorney with a Ph.D. in biological and computational chemistry from MIT. That training lets me read the lab data, follow the modeling, and talk with your scientists in their own terms. It also helps during examination: a rejection is easier to answer when the response explains the science clearly and the specification was written to support it from the start.

Courts have raised the bar on enablement and eligibility in recent years, from Amgen v. Sanofi on genus claims to the ยง 101 questions that affect quantum computing and machine learning inventions. Applications drafted with those standards in mind are cheaper to prosecute and harder to challenge.

Getting started

A first conversation usually covers what the technology does, what has already been published or shown in public, who contributed to it, and what the business needs from patents over the next 12 to 24 months. Bring a short description, any papers or slides, and a list of upcoming disclosures such as conferences, publications or investor pitches.

Timing often matters more than founders expect. Before a public talk or a paper, read when to file a patent application and the most common provisional application mistakes. For more on each technology area, see Patent Insights.