J.D., Temple University cum laude
M.S., Organic Chemistry, University of Pennsylvania
B.S., Chemistry, University of Pennsylvania
District of Columbia
United States Patent and Trademark Office
United States District Court for the Eastern District of Pennsylvania
Mr. Bodenstein is a director in the Biotechnology/Chemical Group where he advises clients in the fields of small molecule organic chemistry, pharmaceutical formulations, polymer chemistry, material science, and related chemical technologies.
Mr. Bodenstein regularly assists clients with creating and managing strategic patent portfolios, rendering freedom-to-operate and patentability opinions, managing complex and high priority patent prosecution (including preparing, filing, and prosecuting “Track 1” applications), rendering validity and infringement opinions, and conducting and managing complex due diligence investigations in connection with acquisitions and investments.
In addition to his focus on pure patent matters, Mr. Bodenstein regularly advises clients on the intricacies of technology transfer including the drafting and negotiation of term sheets, license agreements, material transfer agreements, sponsored research agreements, confidentiality and nondisclosure agreements, and joint developments agreements.
Prior to joining Sterne Kessler, Mr. Bodenstein was Intellectual Property Counsel at Medicis Pharmaceutical Corp. (now a division of Valeant Pharma). At Medicis, he managed complex patent prosecution, opinion, due diligence, and contract matters and was highly integrated with internal Medics project teams as well as Business Development. Working closely with Business Development, Mr. Bodenstein oversaw the complex patent due diligence that resulted in Medicis obtaining a multi-million dollar license to an expansive portfolio of novel small molecule immune response modifiers owned by 3M.
Before becoming a lawyer, Mr. Bodenstein spent two years in the Process Research and Development Group at Merck, where he independently developed and optimized scalable synthetic procedures for the multi-kg production of clinical and pre-clinical candidates. He also spent two years in the CNS Medical Chemistry group at Pfizer (Groton), where he synthesized many novel neuronal nitric oxide synthase inhibitors.
Before joining Medicis, he was an associate and patent agent in the IP Group of an AmLaw 100 law firm.
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