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Franklin S. Abrams, Partner

Practice Areas: Patent law, trademark law, trade secrets, due diligence, patent prosecution, opinions, litigation, and agreements

Science and Technology Expertise: Biotechnology, the chemical arts, biophysical chemistry, spectroscopy, life sciences, pharmaceuticals, and medical devices

P: (212) 813-1600
F: (212) 813-9600
E: fabrams@springutlaw.com

Franklin practices all aspects of patent law with an emphasis on work in the technical areas of pharmaceuticals, biotechnology, medical devices, and the chemical arts. He has extensive experience preparing and prosecuting patent applications and drafting opinions concerning patentability, validity, non-infringement, enforceability, and Hatch-Waxman Paragraph IV certifications.

Franklin has developed and managed domestic and international intellectual property portfolios for his clients, providing them with effective patent prosecution strategies, and counseling them on all areas of intellectual property law to achieve their business goals. He also has experience providing freedom-to-operate analysis, drafting agreements relating to intellectual property and technology, and conducting due diligence investigations that often involve evaluating patent portfolios and technology for business transactions.

In addition to practicing at traditional intellectual property law firms, Franklin has gained diverse experience by, working as in-house intellectual property counsel for a start-up technology company and as foreign intellectual property counsel at a leading intellectual property law firm in Beijing. His strong scientific training enables him to work with a wide range of technologies in his patent practice. Franklin draws on his broad practice and technology experience to work effectively with corporate management, in-house counsel, scientists, and engineers. By immersing himself in his clients’ technology and business goals, as well as their competitive landscape, Franklin helps them achieve the best ROI from their intellectual property.

Franklin holds a B.S. in Chemistry from the State University of New York at Oneonta, an M.S. in Chemistry and a Ph.D. in Molecular Biology and Biochemistry from the State University of New York at Stony Brook, and a J.D. from the Benjamin N. Cardozo School of Law. He is admitted to the New York State Bar and is registered to practice before the United States Patent and Trademark Office. He is a member of the American Intellectual Property Law Association and the American Association for the Advancement of Science.

 

Presentations

  • Biofabricate 2016, New York, NY, “What Rights to our Genetic Information?,” 2016

  • Genspace, Brooklyn, NY, “Intellectual Property, Synthetic Biology, and Creativity,” 2016

  • SUNY Stony Brook, Stony Brook, NY, “Introduction to Intellectual Property Law and Patenting in Biotechnology,” 2015

  • Genspace, Brooklyn, NY, “Introduction to Intellectual Property Law and Patenting in Biotechnology,” 2015

  • World Research Group: 5th Annual Corporate Intellectual Property Counsel Forum, New York, NY; Panelist, “Patent Eligibility 101: Latest Updates on the Patentable Subject Matter Debate,” 2013

  • World Research Group: 4th Annual Corporate Intellectual Property Counsel Forum, New York, NY; Speaker, “Prosecution Strategy in View of Changes to Section 102: First Inventor to File and Prior Art,” 2012

  • New York Biotechnology Association, Annual Meeting, New York, NY; Speaker, “U.S. Biotechnology Companies in China: Protecting Their IP,” 2010

  • LES/Tech Valley Fall Workshop Series, Albany Law School, Albany, NY; Speaker, “Technology Based Companies Doing Business in China: Protecting and Developing Their Intellectual Property,” 2009

  • MedTech Conference, Rochester, NY; Panelist, “Voices from the Middle Kingdom: IP Opportunities and Challenges in China,” 2009

  • Asia Business Forum, China Pharmaceuticals Conference, Beijing, China; Speaker, “Export and Maintenance of Ownership of Inventions Made in China,” 2006

  • American Intellectual Property Law Association, Annual Meeting, Washington, D.C.; Speaker, “Metabolite Labs, Inc. v. Lab.Corp of Am. Holdings, 370 F.3d 1354; 71 U.S.P.Q.2D 1081 (Fed.Cir 2004): Patentability of Diagnostic Methods,” 2005

  • American Intellectual Property Law Association, Annual Meeting, Washington, D.C.; Speaker, “Introduction to Chinese Patent Law,” 2005

  • Reexamination Board of the State Intellectual Property Office of the P.R. of China, Beijing, China; Speaker, “Invalidation of Patents in the United States,” 2005