Duncan Greenhalgh is a senior partner in Goodwin's nationally recognized Life Sciences group where he counsels companies, entrepreneurs, investors, and investment banks on intellectual property matters. His practice focuses on developing and implementing complex intellectual property and market exclusivity strategies for emerging and mature life sciences companies, with a focus on maximizing exclusivity for biologic and chemical therapeutics. While he focuses on US and ex-US patent strategies and prosecution activities, he also advises clients on intellectual property due diligences, freedom-to-operate and risk assessments, and intellectual property agreements, including collaboration and license agreements.
Dr. Greenhalgh has been consistently recognized as a leading life science patent attorney by numerous legal guides. Chambers USA recognized him for being “particularly adept at advising life sciences companies on IP and market strategy” and noted that he is “great at finding solutions and has good business acumen.”
Dr. Greenhalgh has been recognized by Chambers USA: America’s Leading Lawyers for Business (2009-2023), LMG Life Sciences (2012-2014, 2016-2022), Managing IP - IP Stars (2012-2023), The Best Lawyers in America (2017-2023) and Intellectual Asset Management’s Patent 1000 (2015-2023) as an industry leader for his intellectual property expertise in life sciences.
Experience
Dr. Greenhalgh has developed and implemented patent strategies for a many therapeutics, including new chemical entities and biologics, some of which have gained US FDA and worldwide regulatory approval. He has significant experience and a deep understanding of the requirements for maximizing patent exclusivities, and positioning and patent and regulatory strategies for partnering and collaboration transactions, financing events such as venture financings and public offerings, and M&A activities.
He specializes in developing and managing domestic and foreign patent portfolios, including developing, implementing and expediting complex prosecution strategies in the United States and abroad, FDA Orange Book submissions, patent term extensions, and has handled numerous post grant proceedings, including reissue, ex parte and inter partes reexamination, and interference proceedings at the United States Patent and Trademark Office, and foreign patent opposition proceedings. He counsels clients on preparing for ANDA and biosimilar competition.
Dr. Greenhalgh conducts intellectual property due diligence investigations in connection with various transactions, including investments in public and privately held companies, public offerings, licensing transactions, strategic alliances, and M&A activities.
Representative Matters
- Advised Astria Therapeutics (f/k/a/ Catabasis Pharmaceuticals) in the development and execution of its global patent estate relating to its STAR-0215 antibody-based product candidate, its acquisition of Quellis Biotherapeutics, the company’s initial public offering and subsequent follow-on offerings
- Advised AVEO Pharmaceuticals on patent matters relating to its various product candidates, including tivozanib (FOTIVDA®), which has been approved for sale in the US and abroad, Orange Book and patent term extensions for tivozanib, and assisted the company with its initial public offering, follow-on offerings and subsequent acquisition by LG Chem for $571 million
- Advised Cabaletta Bio on patent matters including the patent rights in-licensed from the University of Pennsylvania and IASO Therapeutic relating to its various chimeric antigen receptor T cell (CART) and chimeric autoantibody receptor T cell (CAART) product candidates, its Series A financing, initial public offering and subsequent follow-on offerings
- Advised Candel Therapeutics in its patent matters relating to is engineered viruses, including its clinical product candidate and its pre-clinical products candidates based on adenoviral (e.g., CAN-2409) and herpes simplex SV (e.g., CAN-3110) platforms for treating various cancers, its collaboration with the University of Pennsylvania, its initial public offering, and follow-on offerings
- Advised Dragonfly Therapeutics in connection with its global patent estate covering its TriNKET® platform and clinical and pre-clinical product candidates, and its ongoing collaborations with AbbVie, BMS, Gilead, and Merck
- Advised Esperion Therapeutics in its global patent estate relating to its approved products, NEXLETOL® and NEXLIZET®, Orange Books submissions, requests for patent term extensions and supplementary protection certificates, its initial publication offering and follow-on offerings, and its $510 million collaboration agreement with Otsuka Pharmaceutical Co., Ltd.
- Advised LumiraDx on its patent matters relating to its next generation, point of care diagnostic platform, and products, and its public offering via a SPAC valuated at $3 billion and subsequent follow-on offerings
- Advised Lysosomal Therapeutics in the development of its global patent estate relating to its product candidates, including its small molecule clinical asset (LTI-291) for treating Parkinson’s, its partnering agreement with Allergan, and subsequent acquisition by BIAL
- Advised NanoMosaic in connection with the development and implementation of its patent estate relating to its nanoneedle-based (MosaicNeedle™) detection system for use in proteomics and multi-omics applications, and its over-subscribed Series A financing
- Advised Palleon Pharmaceuticals in the development and execution of its global estate covering its clinical and pre-clinical engineered protein product candidates, its strategic collaboration with Henlius for the development of bifunctional sialidase therapies, license agreements with various academic institutions, successful defense of a European patent in an opposition proceedings, and various financings, including Series A and Series B financings
- Advised Vaccitech in connection with its patent estate relating to its clinical and pre-clinical vaccines for treating, for example, Hepatitis B, Human papillomavirus, and prostate cancer, as well as assisting the Vaccitech with its initial public offering and follow-on offerings
- Representation of issuers during initial public offerings and follow-on offerings for ArgenX, Astria Therapeutics, Beigene, AVEO Pharmaceuticals, Cabaletta Bio, Candel Therapeutics, Esperion Therapeutics, LumiraDx, Orchard Therapeutics, ProQR Therapeutics, and Vaccitech
- Representation of numerous underwriters during initial public offerings and follow-on offerings, including, for example, AC Immune, Freeline Therapeutics, Intercept Pharmaceuticals, Intrexon Corporation, Omega therapeutics, Point Biopharma Global (SPAC), Rapid Micro Biosystems, Sarepta Therapeutics, and SQZ Biotechnologies
- Numerous venture financings including, for example, Amunix Pharmaceuticals, Arch Oncology, Artios Pharma, Beam Therapeutics, CHORD Therapeutics, Prometheus Biosciences, and Quell Therapeutics
- Xeraya Capital in connection with its investments in numerous companies
Professional Activities
Dr. Greenhalgh is a member of a number of professional organizations, including the American Intellectual Property Law Association, the American Bar Association, the Boston Bar Association and the Boston Patent Law Association.
Professional Experience
Prior to joining Goodwin in 2005, Dr. Greenhalgh was a member of the Patent and Intellectual Property Group at Testa, Hurwitz & Thibeault LLP in Boston from 1993 until 2005.
Credentials
Education
JD1998
Suffolk University School of Law
(magna cum laude)
PhDBiochemistry1989
University of Leeds
BScBiotechnology1985
University of Leeds
(with honors)
Admissions
Bars
- Massachusetts
- U.S. Patent and Trademark Office (USPTO)
Courts
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the District of Massachusetts
Recognition & Awards
Dr. Greenhalgh has been selected for inclusion in Chambers USA: America's Leading Lawyers for Business, 2009-2023.
Dr. Greenhalgh has been recognized as an industry leader for his intellectual property expertise in life sciences, including LMG Life Sciences (2012-2014 and 2016-2022), The Best Lawyers in America (2017-2023) and Managing IP - IP Stars, 2012-2023, and Intellectual Asset Management’s Patent 1000 (2015-2023).
Publications
Dr. Greenhalgh is a frequent speaker on intellectual property matters both in industry settings and at Boston-area universities.