Biography: Patents

Otto Licks is the partner leading the patent, life sciences and complex litigation groups. Elected as the most admired Brazilian IP lawyer in 2011 (Análise Advocacia 500), he advises and practises trial and appellate litigation for the life sciences, health-care, telecoms, information technology and oil and gas sectors, working in the intersection of regulatory and IP laws, with due diligence, business transactions, government procurement and antitrust, including data package exclusivity, regulatory compliance, misleading advertising, unfair competition, IP policy-making and qui tam actions. He leads the largest litigation practice on food and drug matters in the country and has successfully worked in cases relating to biosimilars and nanotechnology-based products. He obtained several injunctions in complex trademark cases involving technology or large amounts of data. He publishes extensively in the areas of practice and is an experienced speaker in programmes in the US, Europe and Latin America.

Notable career highlights include representing the world-leading provider of telecommunications equipment and related services to mobile and fixed network operators globally in the largest patent litigation lawsuit in Brazil; a top European health-care supplier in the largest medical device patent litigation in Brazil; European pharmaceutical research-based industry in unfair competition and copyright infringement case against branded generics (similar); the Association of Pharmaceutical Products of the State of São Paulo in a leading case where the pharmaceutical industry recuperated the right to market vaccines with trademarks in Brazil; in a landmark decision, the Court of Appeals for the First Circuit affirmed the district court's decision and a preliminary injunction, declaring the unconstitutionality of a rule of law that has existed in Brazil since the 1970s; the leading Japanese research-based pharmaceutical industry against the Brazilian FDA (ANVISA), where the district court issued a final judgment on a record timing, ordering the ANVISA to grant prior approval to pharmaceutical patents; one of the three largest US research-based pharmaceutical industries on several cases involving infringement and validity patent portfolio covering a glaucoma drug, where more than 12 court decisions have been issued in the last 12 months, affirming patent rights and preventing the launch of generics; prosecuted citizen's petitions cases before federal courts and the Brazilian Federal Accountability Tribunal (TCU) (equivalent to GAO OMB) seeking to invalidate governmental purchases of substandard or patent infringing drugs; large pharmaceutical companies in litigation against the Brazilian FDA (ANVISA) seeking to overrule the agency's denial of prior approval to the grant of pharmaceutical patent applications, and in lawsuits aiming at overcoming administrative denials of patent applications by the Brazilian Patent Office (INPI); different European and US research-based companies on data package exclusivity litigations. Represented top pharmaceutical industry against Pfizer on the erectile dysfunction patent litigation and against Dr Reddy's on the food and drug litigation that prevented the registration of 'me-toos' for several years. Represented a recently acquired US research-based pharmaceutical industry against Novartis, on the largest monetary award ever granted for unfair competition; represent US and European research-based industries in government bids and public-private partnerships (PPP).

He was elected by Which Lawyer? magazine as a highly recommended attorney in the intellectual property and life sciences area since 2008, and has also been recommended by PLC Life Sciences magazine since 2006 and by the PLC Intellectual Property magazine since 2007.

Biography: Life Sciences

Otto Licks is the partner leading the patent, life sciences and complex litigation groups. Elected as the most admired Brazilian IP Lawyer in 2011 (Análise Advocacia 500), he advises and practises trial and appellate litigation for life sciences, health care clients, telecom, information technology and oil and gas, working in the intersection of regulatory and IP laws, with due diligence, business transactions, government procurement and antitrust, including data package exclusivity, regulatory compliance, misleading advertising, unfair competition, IP policy making and qui tam actions. He leads the largest litigation practice on food and drug in the country and has successfully worked in cases relating to biosimilars and nanotechnology-based products. He obtained several injunctions in complex trademark cases involving technology or large amounts of data. He publishes extensively in the areas of practice and is an experienced speaker in programmes in the US, Europe and Latin America.

Notable career highlights include representing the world-leading provider of telecommunications equipment and related services to mobile and fixed network operators globally in the largest patent litigation lawsuit in Brazil; a top European health care supplier in the largest medical device patent litigation in Brazil; European pharmaceutical research-based industry in unfair competition and copyright infringement case against branded generics (similar); the Association of Pharmaceutical Products of the State of São Paulo in a leading case where the pharmaceutical industry recuperated the right to market vaccines with trademarks in Brazil; in a landmark decision, the Court of Appeals for the First Circuit affirmed the district court's decision and a preliminary injunction, declaring the unconstitutionality of a rule of law that has existed in Brazil since the 1970s; the leading Japanese research-based pharmaceutical industry against the Brazilian FDA (ANVISA), where the district court issued a final judgment on a record timing, ordering the ANVISA to grant prior approval to pharmaceutical patents; one of the three largest US research-based pharmaceutical industries on several cases involving infringement and validity patent portfolio covering a glaucoma drug, where more than 12 court decisions have been issued in the last 12 months, affirming patent rights and preventing the launch of generics; prosecuted citizen's petitions cases before federal courts and the Brazilian Federal Accountability Tribunal (TCU) (equivalent to GAO OMB) seeking to invalidate governmental purchases of substandard or patent infringing drugs; large pharmaceutical companies in litigation against the Brazilian FDA (ANVISA) seeking to overrule the agency's denial of prior approval to the grant of pharmaceutical patent applications, and in lawsuits aiming at overcoming administrative denials of patent applications by the Brazilian Patent Office (INPI); different European and US research-based companies on data package exclusivity litigations. Represented top pharmaceutical industry against Pfizer on the erectile dysfunction patent litigation and against Dr Reddy's on the food and drug litigation that prevented the registration of 'me-toos' for several years. Represented a recently acquired US research-based pharmaceutical industry against Novartis, on the largest monetary award ever granted for unfair competition; represent US and European research-based industries in government bids and public-private partnerships (PPP).

He was elected by Which Lawyer magazine as a highly recommended attorney in the intellectual property and life sciences area since 2008, and has also been recommended by PLC Life Sciences magazine since 2006 and by the PLC Intellectual Property magazine since 2007.