Benjamin A. Berkowitz



Benjamin Berkowitz is a partner and intellectual property lawyer in the Washington, D.C. office of Foley & Lardner LLP. He has experience counseling clients on legal and strategic issues related to intellectual property, drafting and prosecuting patent applications in the U.S. and abroad, and evaluating intellectual property for due diligence analyses and freedom to operate opinions. Dr. Berkowitz has prosecuted a variety of chemical, biochemical and mechanical patents, in a broad spectrum of technologies including: plant molecular biology, antibodies, chemical sensors, optical equipment, small molecules, polymers, and pharmaceuticals. He practices in the firm's Chemical, Biotechnology & Pharmaceutical and International Practices, as well as the Life Sciences Industry Team. In addition, he was chair of the firm's National Associates Committee.

Dr. Berkowitz also counsels companies on due diligence matters for business deals and securities offerings. He has served as lead IP counsel for companies in deals totaling over $1.2 billion and worked with numerous companies in securities offerings, including IPOs.

Dr. Berkowitz maintains a niche practice in helping companies receive IP protection on plant varieties, including plant breeders rights protection, plant patents, and PVPA protection.


In 2009, the Legal 500 recognized Dr. Berkowitz as one of the leading lawyers in the U.S. for intellectual property, patent prosecution and plant patents.


Dr. Berkowitz received his J.D., cum laude, from Georgetown University Law Center in 2004. While in law school, he interned for Judge Arthur Gajarsa at the United States Court of Appeals for the Federal Circuit. Dr. Berkowitz has a Ph.D. in molecular biophysics and biochemistry from Yale University (2001) and a B.S. in chemical engineering from Columbia University (1994).


Dr. Berkowitz is admitted to practice in Virginia, New York, and the District of Columbia, as well as before the United States Supreme Court, the United States Court of Appeals for the Federal Circuit and the United States Patent Office.

Publications and Presentations

  • Benjamin Berkowitz and Stephen Maebius, "United States: Reforms Include Post-Grant Opposition," Managing Intellectual Property, October 2008
  • George Best, Benjamin Berkowitz, and Stephen Maebius, "How Damaged Is the Patent Reform Act?" Legal Times, July 7, 2008
  • Berkowitz B, Huang DB, Chen-Park FE, Sigler PB, Ghosh G, "The x-ray crystal structure of the NF-kappa B p50.p65 heterodimer bound to the interferon beta -kappa B site," J Biol Chem. 2002 Jul 5;277(27):24694-700
  • "Intellectual Property Protection for Plant Inventions - A Practical Guide for the U.S.," Tel Aviv Israel, May 26, 2008
  • "Patent Reform 2008: The Current Debate and Its Implications for Biotech," Tel Aviv, Israel, May 26, 2008
  • "Patent Reform Act of 2008: The Current Debate and Its Implications for Biotech," New York Biotechnology Association Meeting, May 18, 2008
  • "New USPTO Continuations and Claim Rules and Their Practical Implications," Tel Aviv, Israel, November 5, 2007
  • "Practical Considerations in Restriction Practice," Tel Aviv, Israel, Summer 2007

Representative Matters

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In January 2014, Dainippon Sumitomo Pharma Co., Ltd entered into an agreement with Edison Pharmaceuticals, Inc. ("Edison") that amends the license agreement between the two companies relating to EPI-743 and EPI-589, which are therapeutic agents under development for mitochondrial disease. On the same date, a joint research agreement for discovery of novel candidate pharmaceutical compounds targeting cellular energy metabolism and a stock purchase agreement relating to DSP’s purchase of an equity interest in Edison were also entered into. Foley & Lardner LLP client Dainippon Sumitomo Pharma Co., Ltd. manufactures and sells pharmaceuticals, food ingredients, food additives, veterinary medicines, diagnostics, and others in Japan, China, North America, and internationally. The company offers various pharmaceutical products and develops and sells ingredients and additives and offers veterinary medicines for companion animals, including dogs and cats; and farm animals, such as cattle, swine, horses, and cultured fish. Additionally, the company develops point-of-care testing diagnostic products for infectious diseases. The company was founded in 1897 and is headquartered in Osaka, Japan. Dainippon Sumitomo Pharma Co., Ltd. operates as a subsidiary of Sumitomo Chemical Co., Ltd. Edison Pharmaceuticals is a biotechnology company based on the discovery and development of low-molecular therapeutic drugs for the treatment of Mitochondrial disease. Founded in 2006, it is headquartered in Mountain View, California, USA.
As a biotechnology manufacturer pursuing advanced approaches to treating life-threatening diseases, our client understands that large-scale innovation requires not only inspiration but often a good deal of IP due diligence. Foley represents a next-generation biotech manufacturer that has developed and produced treatments for hypertension, cardiovascular disease, forms of cancer, and infectious diseases. With the ultimate goal of conquering these illnesses and possibly even producing engineered human organs for transplants, this company first tapped Foley’s intellectual property team to investigate and license the necessary technologies. With broader capabilities than typical IP law firms, Foley handled other services as well, including assisting our client with its international expansion. Based on lower costs and government investment in a life sciences/regenerative medicine infrastructure, our client determined that a presence in China would be beneficial to its business strategy. Attorneys from Foley’s China Practice were brought in to help guide our client through the development of a new business entity and a medical university partnership in China.Together, Foley’s IP and China teams, both well qualified and equipped, handled a second strategy in this company’s work, focused on organ repair and replacement. Our client pursued a novel approach of creating a new and potentially unlimited supply of transplantable organs using cells engineered in a lab. With a combination of healthy, transplantable tissue and medication that until now have only been able to prolong life in patients with a fatal condition, our client is prepared to offer patients a real chance at long-term survival.Many companies would be concerned that pursuing this type of technology in the early stages may be too risky. However, with Foley’s support in IP due diligence, licensing, and agreement drafting, in addition to our help paving the way for the company’s work in China, our client is able to proactively pursue innovation and other advanced manufacturing in next-generation technologies. Our assistance in illuminating the IP and business risks and helping the client devise strategies to mitigate those risks has made it possible for the company to pursue its bold vision and proceed with further research and development in this promising area. At a Glance: Next-Generation Manufacturing Business Issues: • Customer-Focused Innovation• Global Engagement• Next-Generation Technologies
Represented the senior party patentee, Idemitsu Kosan Co., Ltd., in two interferences before the USPTO. Each interference was based on a different application owned by a competitor. The USPTO ruled in favor of Idemitsu Kosan in both interferences.