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Background

Peter Fasse is a Principal in the Boston office of Fish & Richardson. His practice emphasizes patent prosecution and client counseling in a wide variety of technologies, with an emphasis on biotechnology and other biological and medical fields as well as various "green" technologies. Peter works with clients to develop competitive worldwide patent strategies and to establish solid and defensible patent portfolios. He performs competitive patent analyses and identifies third party patent risks, and provides patentability and freedom-to-operate opinions. Peter has participated in opposing and defending patents in the European Patent Office and in U.S. litigation.

Mr. Fasse has experience in various fields including molecular biology, chemistry, microfluidic systems, medical imaging, optics, biomechanical and biomedical engineering, and various green technologies. Specific applications relate to, e.g., human and bacterial genes and polypeptides, nucleic acid-based therapies such as DNA vaccines and RNAi, tranexamic acid compositions, microfluidic analysis of fetal blood cells and circulating tumor cells, nanoparticle and vector-based delivery of therapeutic agents, automated blood analysis systems, nucleic acid probes, tissue engineering, infusion pumps, near infrared scanning catheters, microbes that produce biofuels or electricity, laser scanning optical cytometers, lithotriptors, "biochips," laser ablation devices, dendritic cell-based vaccines, cellulose processing for ethanol production, CO2 recycling power plants, implantable continuous drug delivery devices and microcapsules, ultrasound probes, wind and solar power, cytokines such as IL-8 and PF4, and diagnostic and therapeutic methods for, e.g., AIDS, cancer, autism, diabetes, psoriasis, and arthritis.

In litigation and European opposition matters, Mr. Fasse has represented clients in a variety of patent infringement suits and trade secret misappropriation cases. Specific subject matter at issue included, e.g., cancer therapeutics (Erbitux), methods of treating arthritis (CTL4Ig), dental implants, hook and loop fastener systems, computer-controlled medical infusion pumps, shaving compositions, fiberglass casting material, and bacterial culture media.

Education

J.D., George Washington University Law School 1987


B.S., Massachusetts Institute of Technology 1983
Bioelectrical Engineering


B.S., Massachusetts Institute of Technology 1983
Life Sciences

Admissions

  • U.S. Patent and Trademark Office 1988
  • Massachusetts 1987

Languages

  • English
  • German

Other Distinctions

Recognized as a 2013 Top Rated – AV® PreeminentTM Lawyers in Intellectual Property Law and received the 2013 International Legal Award for Practice Excellence from Corporate INTL Magazine.

Selected Publications

"Patent Eligibility of Nature-Based Products: Current View of the United States Patent & Trademark Office," Industrial Biotechnology, Cong Yao, Craig Countryman and J. Peter Fasse (April 2015).

"Intellectual Property of Plants and Plant Products: Is Fruit Juice Eligible for Patent Protection?Industrial Biotechnology, Roy K. Hom and Peter J. Fasse (October 2014).

"The USPTO’s Current View on Patent Eligibility," Industrial Biotechnology, Rebecca Shult and J. Peter Fasse (June 2014).

"Patent Eligibility of Biological Methods and Compositions," Industrial Biotechnology, Tiffany A. Reiter and J. Peter Fasse (June 2013).

"Upcoming Changes in Patent Law May Significantly Impact the Biotech Industry," Industrial Biotechnology, Michael M. Rosen and J. Peter Fasse (October 2012).

"Patent Eligibility of Method Claims: What Is the Impact of the Supreme Court’s Prometheus Decision?" Industrial Biotechnology, Guari Dhavan, Irene Hudson, and J. Peter Fasse (June 2012).

"Strategies for expediting examination of US patent applications," Industrial Biotechnology, Tiffany A. Reiter, Jay Kugler DeYoung, Stuart MacPhail, and J. Peter Fasse (October 2011).

"Isolated, purified, covalent bonds, or magic microscopes? What defines patentable nucleic acid molecules?," Industrial Biotechnology, Tiffany A. Reiter and J. Peter Fasse (June 2011).

"The America Invents Act and Its Importance to Patent Prosecution in the Biotech Sector," Industrial Biotechnology, Tiffany A. Reiter, Erin L. Baker, and J. Peter Fasse (April 2012).

"Current Views on Obviousness Under US Patent Law," Industrial Biotechnology, Autumn J.S. Hwang and J. Peter Fasse (October 2010).

"’Best Mode’ Requirements Under US Patent Law: When Your Best Description is Just Not Good Enough," Industrial Biotechnology, Philip B. Nickson and J. Peter Fasse (August 2010).

"After In re Kubin, can the manner in which an invention was made render the invention ‘inherently obvious?" Industrial Biotechnology, Nicholas M. Boivin and J. Peter Fasse (June 2009).

"Maximizing IP value in an economic downturn (& beyond) in the life science industry," with Jaclyn M. Mason, Sean M. Dean, and Gwilym J. O. Attwell, Industrial Biotechnology (March 2009).

"Do’s and Don’ts for Maximizing Your IP Value in Uncertain Times," J. Peter Fasse (December 2008).

"BENCH TO BENCH: USPTO’s security & energy reviews, Pitfalls and practice tips to help prevent loss of patent rights," with Rolf G. Hille, Industrial Biotechnology (June 2008).

"For better or for worse? How US legislative patent reform may affect the biotech sector," with Elizabeth N. Kaytor and Michael M. Rosen, Industrial Biotechnology (March 2008).

"Issues in Identifying Contributors to Inventions Under U.S. Law," with E. Kaiser, AUTM Technology Transfer Practice Manual, Volume 3, Part 2, Chapter 5 (January 2008).

"Beyond KSR v. Telefex: How the courts and USPTO have decided biotechnology and chemistry cases", with Richard G.A. Bone, M. Angela Parsons, and Gretchen L. Temeles, Industrial Biotechnology (October 2007).

"What the US Supreme Court’s KSR v. Teleflex decision means for biotech," J. Peter Fasse, Industrial Biotechnology (June 2007).

"Intellectual Property (IP) Do’s and Don’ts for Start-Up Companies," J. Peter Fasse (March 2007).

"Do’s and Don’ts for Keeping Lab Notebooks," J. Peter Fasse.

Selected Presentations

​​"The ‘Muddy Metaphysics’ of Inventorship: What You Need to Know" (June 28, 2016). View​​ ​presentation materials. ​

"Patent Eligible Subject Matter" (May 16, 2016). View ​presentation materials. ​

Presentation to The Massachusetts Eye & Ear Infirmary and The Schepens Eye Research Institute – "Patents – Just the Basics" (March 31, 2016). View​ Presentation Materials.  ​

"Biotech & Pharmaceutical Patent Cases: 2015 Year in Review" (January 13, 2016). View​ presentation materials. 

"Is My Project Patentable? (And What Does that Really Mean?)" – A presentation for researchers at the Boston Children’s Hospital (June 23, 2015). View presentation materials.

Presentation to Illumina’s Patent Department – "Nature-Based Products and Abstract Ideas under Recent PTO Guidance and Court Decisions – Is There New Hope under Section 101?" (February 9, 2015). View presentation materials.

Presentation to University of Massachusetts Commercial Ventures and Intellectual Property Case Managers’ Meeting – "Patent Cases at the Supreme Court and Federal Circuit: Significant Cases in 2013″ (January 21, 2014). View presentations materials.

Presentation to Mass Eye & Ear Infirmary and the Office of Intellectual Property & Commercial Ventures – Recent Changes in US Patent Law (July 11, 2013). View presentation materials.

Presentation to University of Massachusetts Commercial Ventures and Intellectual Property Case Managers Meeting – Changes in US and European Patent Law: What YOU need to Know (February 5, 2013). View presentation materials.

Presentation to University of Massachusetts Commercial Ventures and Intellectual Property Case Managers Meeting – The "America Invents Act":  What You Need to Know (October 11, 2011). View presentation materials.

Boston Breakfast Seminar Series – The "America Invents Act":  What You Need to Know (September 28, 2011). View presentation materials.

"Biotech and Pharmaceutical Patents at the Federal Circuit: 2010 Year in Review" – A seminar on biotech and pharmaceutical IP law topics (January 18, 2011).
View presentation materials.

"2010 Patent Law Update" – Seminar for University of Massachusetts Technology Transfer Office (April 13, 2010).

"Innovations in Patent Law in Europe and the U.S.: What European Companies Need to Know to Protect Their Most Important Assets," Munich, Germany (February 19, 2009).

"Innovations in Patent Law in Europe and the U.S.: What European Companies Need to Know to Protect Their Most Important Assets," Munich, Germany (January 29, 2008).

"Beyond KSR: What is Obvious Today?," Massachusetts Association of Technology Transfer Offices seminar (January 22, 2008).

"Current Trends in Investing in the Very Small," panel moderator for 3rd Annual Nanotech and Microtech Investors Forum (December 3, 2007).

"Do’s and Don’ts for Biotech Startups," panel moderator for BIO 2007 (May 6, 2007).

"Going Green: Ins and Outs of Growing a Green Start Up," panelist at 2007 World Congress on Industrial Biotechnology and Bioprocessing (March 22, 2007).

"Innovations in Patent Law in Europe and the U.S.: What European Companies Need to Know to Protect Their Most Important Assets," Munich, Germany (January 5, 2007).

"The Application of Tiny Technologies to Real Products – An Industry Perspective," panel moderator for 2nd Annual Nanotech Investors Forum (December 4, 2006).

"Innovations in Patent Law in Europe and the U.S.: What European Companies Need to Know to Protect Their Most Important Assets," Munich, Germany (December 1, 2005).

"What You Need To Know About Nanotechnology" Advanced Legal Studies Course at Suffolk University Law School, Boston, MA (October 1, 2004).

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