Michael A. Davitz

Intellectual Property and Patent Counsel

Partner, Fahmi, Sellers, Embert & Davitz

Michael A. Davitz is both a physician-scientist and attorney. His practice focuses on creating value for clients through the development and effective enforcement of intellectual property rights. He is a registered U.S. patent attorney as well as a physician with over 15 years of experience in biomedical research, and more than ten years of experience providing strategic counseling to clients in all aspects of intellectual property law.

Dr. Davitz has extensive experience negotiating and drafting licensing, technology transfer and research-and-development agreements. In the pharmaceutical industry, he has negotiated and drafted numerous types of agreements, including licensing, risk-sharing, joint development, product acquisition and supply agreements. Michael has also conducted intellectual property due diligence for joint ventures, mergers, acquisitions, bankruptcy proceedings and venture capital funding. For a multinational company, he developed a series of intra-company intellectual property cross-licensing agreements that permitted transfer of technology and products among the various subsidiaries in a tax-efficient manner.

Dr. Davitz has prosecuted patents in a wide variety of different technologies, including (i) pharmaceuticals, both generic and innovator, (ii) medical devices such as stents, needles and laboratory instrumentation, (iii) biotechnology, specifically involving monoclonal antibodies and genetically transformed organisms and (iv) information technology, for example, linguistic search engines, Internet business methods and genomics. Michael has broad international experience with securing intellectual property protection in Europe, South America, the Middle East, Asia and Canada. In addition, he has experience with European patent and trademark oppositions. He also has provided patentability, freedom-to-operate, non-infringement and invalidity opinions.

He has specific expertise with Hatch-Waxman issues involving the evaluation and development of design-around strategies for generic pharmaceutical products, product portfolio evaluation, Orange Book patent listings, PIV litigation strategies and the negotiation of settlement agreements between innovator and generic companies and between generic companies.

Michael received his J.D. from New York University in 1997, his M.D. from the College of Physicians and Surgeons at Columbia University in 1983, and his B.A. from Yale University in 1978. Prior to law school, he was an assistant professor of pathology and environmental medicine at New York University School of Medicine, where he was a Lucille P. Markey Scholar in the Biomedical Sciences. Following law school, he practiced law at the firms of Darby & Darby and White & Case. He then moved in-house as head of intellectual property for Taro Pharmaceuticals, a multinational pharmaceutical company. After Taro, he became a partner at Axinn Veltrop & Harkrider LLP in the biomedical group. He has published over 25 papers in peer-reviewed scientific journals such as Science and Nature. He is a regularly invited speaker on Hatch-Waxman and other patent issues with the American Conference Institute, Practicing Law Institute, IQPC and the Commercial Law Development Program of the U.S. Department of Commerce. He is conversant in Russian.