Marta E. Delsignore

Marta Delsignore is Of Counsel in Goodwin’s Intellectual Property Litigation practice, and practices in the field of patent law. She is a member of the firm’s Life Sciences Disputes group. Recognized as a “Life Sciences Star” by Euromoney’s LMG Life Sciences and Best Lawyers in America, she focuses primarily on providing patent opinions and related client counseling, and performs due diligence reviews of patent portfolios.

In addition, Marta has represented clients in post patent issue proceedings before the United States Patent and Trademark Office Patent Trial and Appeal Board (PTAB). Her experience in these proceedings includes bringing patent challenges, as well as defeating patent challenges at the institution stage in inter partes review (IPR) and post grant review (PGR) proceedings.

She also has extensive experience in patent application preparation and prosecution, litigation and licensing in the fields of pharmaceuticals, chemistry, biochemistry and chemical engineering, including textile fibers and treatment agents, hard surface coatings, household cleaning products, cosmetics, metal processing, catalysts and polymers. With advanced chemistry degrees from Yale and Rutgers, her legal expertise is complemented by a strong science background. She is also co-inventor of four U.S. patents.

Marta has represented numerous clients in patent matters, including Boehringer Ingelheim, West-Ward Pharmaceuticals International Limited, Concert Pharmaceuticals, Inc., IBM, Hanmi Pharmaceutical Co., Limited, and Teva Pharmaceuticals. Her client work includes:

• Strategies for leveraging federal district court litigation and post patent issue proceedings in the United States Patent and Trademark Office Patent Trial and Appeal Board;
• Freedom to operate strategies related to the launch of FDA approved drugs;
• Evaluation of the intellectual property portfolios of target companies in due diligence studies; and
• Patent procurement and portfolio management for academic institutions.

Marta is a member of the American Intellectual Property Law Association, the PTAB Bar Association, New York Intellectual Property Law Association and New Jersey Intellectual Property Law Association and is a member of the nominating committee for award of the Jefferson Medal. Marta is a member of the New York City Bar Association committees on Science and the Law and Drugs and the Law, and chair of the patent subcommittee of the cannabis subcommittee of the American Intellectual Property Law Association.

Marta has been named a “Life Sciences Star” by Euromoney’s LMG Life Sciences in the intellectual property category from 2018-2020 and recognized in Best Lawyers in America, 2023-2024.

Marta has been published in numerous scientific journals, including American Society of Biological Chemists, Journal of Biological Chemistry, Advances in Molecular Relaxation and Interaction Processes, Journal of Molecular Liquids and Journal of Physical Chemistry, as well authoring a chapter on opinions of counsel in “Fundamentals of Patent Prosecution,” PLI (2016).

In addition, Marta has lectured at the Practising Law Institute on the impact of patent prosecution on patent litigation issues and IP issues in business transactions, and at the 2019 BIO International Convention on patent enforcement and protection for cannabis related inventions, and has presented a paper on double patenting and metabolites at the Sixteenth Annual Pharmaceutical/Chemical Patent Practice Update sponsored by the New Jersey Intellectual Property Association.

Her recent publications include:

• Moderator, “Diversity in Clinical Trials,” New York City Bar Association, November 2022
• Speaker, “PLI’s Patent Fundamentals Bootcamp 2021: An Introduction to Patent Drafting, Prosecution, and Litigation,” PLI, June 2021
• Co-Author, “USPTO Creates Pilot Program For New Motion To Amend Practice,” Goodwin, March 2019
• Co-Author, “Forum Selection Clauses Can Doom PTAB Review,” Law 360, April 2018
• Speaker, “Women in IP Breakfast Series — Managing Your Intellectual Property Career,” Committee on Women in the Profession, New York City Bar Association, June 2014