Mind + Muscle

technical minds + legal muscle

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Sterne Kessler Goldstein Fox
John represents pharmaceutical companies and other institutions that seek to acquire or license their products.  He provides counsel on building strong IP portfolios and helps assure a clear path to market.
John M. Covert

Mind + Muscle

John M. Covert

Director

 

Mr. Covert is a director and the Practice Group Leader of the firm's Biotechnology/Chemical Group.  His practice is focused in technologies that involve organic chemistry, such as pharmaceuticals, coatings, fuels, lubricants and pesticides.  He is experienced in a number of interdisciplinary areas, including computer-aided drug design, combinatorial chemistry and medical devices.  He provides counseling with regard to patent portfolio strategy and management with issues that range from licensing, collaborations and technology acquisitions, to patent validity, infringement and design around strategies.

Mr. Covert has performed intellectual property due diligence investigations on behalf of clients seeking to acquire early and late stage pharmaceutical product candidates, drug design platforms, technology for controlling biological reactions, and assisted in all aspects of technology transfer in the pharmaceutical and biotechnology fields.  Additionally, he has

  • created and managed patent portfolios for a number of emerging companies;
  • performed freedom-to-operate clearances for potential commercial products in the pharmaceutical field;
  • created patent strategies for protection of developmental candidates as they progress through pre-clinical and clinical development to commercial stage;
  • cleared biological targets for clients to begin new drug discovery; 
  • resolved inventorship disputes;
  • successfully represented clients in appeals before the U.S. Patent and Trademark Office involving claims to drug delivery technologies and novel nucleic acid products; and 
  • worked with clients to design products that avoid third party patents

Prior to joining the firm, Mr. Covert worked as an Examiner in the Special Laws Administration Group of the United States Patent and Trademark Office where he examined patent applications directed to a variety of chemical compositions and processes.  He also has experience working as a chemist in both small and large company settings.

Publications
  • "Obama Administration Releases Much Anticipated Text of the Trans-Pacific Partnership Agreement," Jeremiah B. Frueauf & John M. Covert, Sterne, Kessler, Goldstein & Fox, November 2015
  • "PTAB Poised to Take Up Hedge Fuds Hijinks in Celgene Cases," John M. Covert, Law360, August 2015
  • "USPTO 101 Guidelines: What Constitutes 'Non-Naturally Occurring' Subject Matter?" John M. Covert and Miklos Gaszner, Ph.D., Sterne, Kessler, Goldstein & Fox, January 2015
  • "Patent Armoring via Reissue Proceedings," Gaby L. Longsworth, Ph.D. and John M. Covert, IP Law360, September 2014
  • "American Invents Act: For US IP, The Cheese Has Been Moved," Kenley K. Hoover, Ph.D. and John M. Covert, European Biotechnology News, June 2014
  • "IP Issues Associated with Drug Development," John M. Covert, Sterne, Kessler, Goldstein & Fox August 2013
  • "IP Clinic: How has first-inventor-to-file changed patent strategy patent strategy," John M. Covert, Managing IP Magazine, May 2013
  • "Final Rules for Implementing the First-Inventor-to-File Provisions of the America Invents Act," John T. Haran and John M. Covert, Sterne, Kessler, Goldstein & Fox, February 2013
  • “What to consider Before Transition to First-to-File," John T. Haran and John M. Covert, Sterne, Kessler, Goldstein & Fox, January 2013
  • Admissions
      • District of Columbia

      • Pennsylvania

      • United States Patent and Trademark Office

  • Education
    • J.D., George Mason University with distinction

    • M.S., Chemistry, Lehigh University

    • B.S., Chemistry, St. Joseph's University

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