Dr. Marcelo Pomeranz

Marcelo focuses his practice on the development and execution of worldwide intellectual property strategies for biotech and pharmaceutical companies. He has extensive experience securing, defending and challenging patents to provide clients with the necessary protection and freedom to operate to monetize their inventions. Marcelo has counseled many prominent life sciences companies and investors on US Food and Drug Administration exclusivity strategies and helped emerging companies and investors navigate diligence matters in venture capital, M&A and public company offerings. He has also supported patent litigation in federal courts and inter partes review challenges before the US Patent and Trademark Office.

Marcelo has significant technical experience across a broad range of biotech and therapeutic technologies, including the gene-editing tool CRISPR, gene therapy, monoclonal antibody therapeutics, bispecific antibodies, antibody-drug conjugates, T-cell engagers, small molecule combination therapies, oral vaccines, oncology, systems biology, biomanufacturing, directed evolution, and strain engineering. He also represents many companies in the dietary supplement, cosmetics, agtech and foodtech industries. He holds a PhD in molecular biology and biotechnology.

Marcelo has a deep understanding of cannabinoid biology and chemistry, representing clients in all areas of cannabinoid research, including cannabis and hemp breeding and genetics, cannabinoid and terpene biosynthesis, synthetic cannabinoid chemistry, cannabinoid and terpene extraction and detection, and cannabinoid formulation and pharmacology. He successfully secured the first patents for THC-containing strains in the US, Canada, Europe and Mexico. In 2021, Marcelo was recognized by Law360 as a Rising Star in the Cannabis category. He is one of a handful of lawyers named as leaders in this area.

Marcelo earned his JD from Georgetown University Law Center, graduating magna cum laude and as a member of the Order of the Coif. He received the American Bar Association's (ABA’s) Award for Excellence in intellectual property law.

Marcelo has authored and co-authored numerous publications appearing in Biochimica et Biophysica Acta, Journal of the Patent and Trademark Office Society, The Plant Journal, Plant Physiology, Plant Signaling & Behavior, Intellectual Property Magazine, and the ABA’s Landslide Magazine.

Publications

• Co-author, “Illegality Doctrine Rejected in Legal Cannabis Patent Case, Confirming Patent Enforceability,” Cooley Alert, February 2023
• Co-author, “IP Protection for Vegetatively Reproduced Plants: New Paths Forward,” 101 J. PAT. & TRADEMARK OFF. SOC’Y 374, June 2021
• Co-author, “EPO: Plants and Plant Materials Not Patentable if Exclusively Obtained by Essentially Biological Process,” Cooley Alert, May 2020
• Co-author, "Protecting Plant Innovation," Landslide (ABA publication), July/August 2019
• Co-author, “USDA Announces Acceptance of PVP Applications for Hemp,” Cooley Alert, April 2019
• Co-author, “Shoots, Leaves and Money Trees,” Intellectual Property Magazine, December 2018
• Co-author, “Linking Genotype to Phenotype: The Effect of a Mutation in Gibberellic Acid Production on Plant Germination” CourseSource. 4. 10.24918/cs.2017.18. (2017)
• Lead author, “High resolution computational imaging of leaf hair patterning using polarizing light microscopy.” The Plant Journal 73(4) November 2012
• Co-author, “From plant regulatory grids to network dynamics” Biochim Biophys Acta. 1819(5):454-6 (2012)
• Lead author, “Putative molecular mechanisms underlying tandem CCCH zinc finger protein mediated plant growth, stress, and gene expression responses.” Plant Signal Behav. (2011)
• Lead author, “Can AtTZF1 act as a transcriptional activator or repressor in plants?” Plant Signal Behav. (2011)
• Co-author, “The Arabidopsis tandem zinc finger protein AtTZF1 affects ABA- and GA-mediated growth, stress and gene expression responses.” Plant J 65: 253-268. (2011)
• Lead author, “The Arabidopsis Tandem Zinc Finger Protein AtTZF1 Traffics between the Nucleus and Cytoplasmic Foci and Binds Both DNA and RNA.” Plant Physiology 152: 151-165. (2010)
• Lead author, “AtTZF gene family localizes to cytoplasmic foci.” Plant Signal Behav 5: 190-192. (2010)

Presentations

• Presenter, “Expand Your Toolbox: Creative Approaches to IP Licensing, Protection and Exclusivity,” INCBA Global IP Symposium, September 28, 2023
• Presenter, “Tech Transfers & M&As: Optimizing IP, Tech Transfers & More, Before, During & After Mergers & Acquisitions,” Lift Cannabis Business Conference, January 12, 2023
• Presenter, "Leveraging Patents and Technology to Grow Your Client’s Cannabis Business," 46th Annual IP Institute: Beyond the Surf: Deep Dives into Intellectual Property, November 5, 2022
• Presenter, "Strategies for Building a Robust Patent Portfolio," International Cannabinoid-Derived Pharmaceuticals Summit, 2021
• Presenter, "Fireside Chat: Meet the Cannabinoid IP Specialists," International Cannabinoid-Derived Pharmaceuticals Summit, 2021
• Presenter, "Cannabinoid-Related IP: Novelty Amidst a Treasure Trove (Strategies for Patenting Cannabinoid-Based Inventions), International Cannabinoid-Derived Pharmaceuticals Summit, 2020
• Presenter, "Genetics and Bioscience IP Panel," 2020 Cannabis Law Institute, October 29, 2020
• Presenter, “Enforceability of Cannabis Patents,” 2019 Cannabis Law Institute in New York Law School, October 4, 2019