Dr. Greg Peterson is a member of Maynard Cooper’s Intellectual Property Practice and advises clients on a wide variety of intellectual property issues. Greg specializes in domestic and international biotechnology, chemical, pharmaceutical and medical device patent prosecution. He has filed and prosecuted over 150 patent applications in diverse technological areas, including novel active pharmaceutical agents, polymer therapeutics, drug delivery systems, nucleic acid-based diagnostics, immunology, treatments for cancer, arrhythmia, diabetes, Alzheimer’s diseases, Huntington’s disease, arthritis, influenza virus, immune system dysregulation, and opthalmic conditions.
Greg’s practice also includes all phases of patent and technology licensing, client counseling, intellectual property portfolio maintenance and strategic planning. He has counseled companies in all phases of technology development and assisted the companies in implementing patent and business strategies to enhance technological market position and execute company strategy. In addition, Greg regularly advises clients in trademark prosecution and FDA approval of branded pharmaceutical products.
Dr. Peterson also advises clients on the issue of patent eligibility and formulates patent strategy to maximize patent protection in this challenging environment. Greg is an active writer and speaker in this area and manages a blog directed to patent eligibility issues.
After graduating from the University of Alabama with a degree in Microbiology, Greg attended the graduate program at the University of Alabama at Birmingham receiving his Ph.D. in Biochemistry and Molecular Genetics. During his time at UAB, Greg became interested in the molecular basis of oncogenesis and signal transduction. During his fourth year, Greg received the prestigious Bertram Marx award for Outstanding Cancer Research for his work on the effects of naturally occurring estrogenic compounds in breast cancer. He graduated from the University of Virginia School of Law where he was active in the Virginia Journal of Law and Technology.
- Antidiabetic therapy patent cases – prosecution of five patent cases involving an antidiabetic therapy involving the novel genes involved in insulin signaling
- Freedom to operate Issues – advised numerous clients on freedom to operate issues, including initiation of successful ex parte reexaminations in which key blocking patents were limited
- Global patent and trademark portfolio management – management of a global patent and trademark portfolio covering devices for an innovative magnetic therapy
- Licensing technologies from research universities – represented companies in licensing a variety of technologies from research universities
- Orthodontic Treatment Patents – prepared and managed patent applications relating to a novel software system for designing and implementing orthodontic treatment plans
- Patent prosecution for diagnostic technology leader – prosecution of patents for a world-wide leader in nucleic acid-based diagnostic technology. We filed the initial patents on the core nucleic acid amplification technology and manage patent prosecution around the globe. In addition, the firm issued separate freedom to operate opinions on products embodying this novel technology
- Pharmaceutical patent prosecution – prosecuting patents for a publicly traded pharmaceutical company, including technology relating to novel compounds for anti-cancer and anti-bacterial therapy and polymorphic variants to its compounds for patent life extension
- Portfolio management for pharmaceutical company – management of the domestic and international patent portfolio of a publicly traded pharmaceutical company in the pulmonary drug delivery space. Responsibilities have included filing new patent applications covering drug delivery technology and pharmaceutical compositions, managing the strategic collaborations and implementing an out-licensing program to maximize the value of non-core intellectual property
- Preparation and negotiation of various technology and intellectual property contracts, including technology collaboration agreements, joint development agreements, and licensing throughout the U.S. as well as Australia, Italy, Turkey, Canada, Mexico, Belgium, Switzerland, France, Japan, and various Middle Eastern countries
- Prepared and filed U.S. and international patent applications for a novel polyimide based polymer. The polymer combines polyimide and nanocomposite technologies to deliver unsurpassed levels of optical clarity, oxidative stability, and stability to solar radiation. The polymer received a prestigious R&D 100 Award in 2008, recognizing it as one of the most important inventions of the year
- Prosecution of biotech and medical device patent applications – successfully prosecuted a variety of patent applications in fields including medical imaging, vaccines, small molecule discovery, medical devices and gene discovery over the last several years
- Prosecution of biotechnology and life sciences inventions
- Representation of university tech transfer offices in prosecuting a wide array of biotechnology and life sciences inventions in diverse areas. These include (1) identification of novel pathways in the body’s response to pathogens and autoimmunity mediated by Th-17 cells, (2) novel mechanisms in cardiac arrhythmia and identification of relevant molecules for treatment of cardiac arrhythmia, (3) nucleoside analogs for antibacterial and anticancer compounds, (4) novel small compounds that inhibit topsomerase II and show in vitro anti-cancer activity, and (5) novel antibiotics which inhibit the gram (+) bacterial enzyme sortase. For the same clients we have prepared and filed applications in the field of neurotechnology including multielectrode recording and improved methods of optical microscopy and imaging intrinsic optical responses. In addition to patent prosecution activities, responsibilities include counseling university officials on commercialization potential and competitive landscape
- Representation of a number of biotechnology start-up companies in the diagnostic and viral vector area. These technologies include nucleic acid based diagnostic tests for viral and bacterial pathogens including H1N1 and lentiviral vectors for expression of genes of interest. Experience includes filing key patents to protect the core intellectual property, perform due diligence and competitive patent assessments. In addition, the firm represented these companies in the sale of this technology to major life sciences companies
- Representation of a developer of innovative X-ray technology for improved portable radiographic devices and methods. The innovative aspects include an auto-positioning system for determination of orientation and position of x-ray cassette to insure optimal radiographic image quality
- Successful re-examination of United States Patent No. 5.243.038 construction of synthetic DNA and its use in large polypeptide synthesis
- The Best Lawyers in America© for Biotechnology and Life Sciences Practice (2007-present); Patent Law (2013-present)
Greg’s Affiliations & Civic Involvement
- American Bar Association
- Alabama State Bar Association
- Birmingham Bar Association
- Biotechnology Association of Alabama
- American Intellectual Property Law Association