Michael N. Mercanti

Partner

Michael N. Mercanti co-founded the firm of Lucas & Mercanti in 2002. His vision was to build a firm of lawyers with exceptionally strong technical backgrounds who would provide strategic advice and advocacy to companies whose success depends on strong worldwide protection of their innovations.

Michael was again listed as a recommended expert in patent prosecution in the 2019 edition of IAM Patent 1000: The World’s Leading Patent Practitioners. The most significant aspect of his global practice is representing pharmaceutical, life sciences and biotech companies. His broad technical expertise includes prodrug technologies such as polymer conjugation, new chemical entities (nce’s or small molecules), antibodies, and related nucleotides drug and formulation development for oral, injectable, topical and inhalation therapies and pharmaceutical excipients and film coatings for both immediate and controlled release of active ingredients.

With nearly 30 years of experience in the field and an undergraduate degree from the Philadelphia College of Pharmacy and Science, Michael has the technical strength and keen legal acumen that enable him to not only address the complexities involved in drafting and prosecuting patents for clients in the life sciences sector, but also to make valuable contributions to their IP-related growth strategies. For example:

Developing IP Legal Strategies that Reflect Competitive Realities: Evaluating competitor patent portfolios is a significant way Michael contributes to his clients’ strategic planning. He also provides clients with guidance on designing around patent claims and developing patent claim strategies which are difficult for competing companies to design around. He often works with international patent counsel to improve patent applications before entering into the USPTO for maximum claim scope, enablement and written description.
Product Life Cycle Management: Michael assists clients with ANDA challenges, filings made under section 505(b)(2) of the Federal Food, Drug and Cosmetic Act and with other tactics to maximize client exclusivity and product revenue streams.
Mergers, Licensing and Other Strategic Alliances: On behalf of acquirers and targets, Michael conducts pre-merger due diligence investigations and evaluations. Michael also represents clients in licensing transactions. including cross-border transactions.
Opposition Proceedings: Michael has experience in US Patent Office re-examination proceedings as well as in opposition proceedings involving the European Patent Office and the Indian Patent Office.
Identifying Opportunities to Broaden Patent Portfolios: Michael contributes to his clients’ success by meeting with in-house counsel, scientists and other strategic personnel to identify patentable aspects of drug development and clinical data which might otherwise have been overlooked.

For larger clients, he is able to handle whatever tasks are required. For smaller clients, Michael draws upon his experience as a former in-house counsel to help identify potentially patentable inventions, to assist in setting up systems for management of clients’ IP portfolios, establishing patent committees, prioritizing filings, and developing global IP portfolios.

NEWS & PUBLICATIONS

AFFILIATIONS

American Bar Association
American Intellectual Property Law Association
N.Y. Intellectual Property Law Association
International Association for the Protection of Intellectual Property (AIPPI)
Philadelphia College of Pharmacy and Science Alumni Association

PRACTICES

EDUCATION

Case Western Reserve University, Juris Doctor
University of the Sciences (Philadelphia College of Pharmacy), Bachelor of Science

ADMISSIONS

New York State Bar
New Jersey State Bar
U.S. Patent and Trademark Office

Email: mnm@lmiplaw.com