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17 April 2018Americas

Eli Lilly: the trials and tribulations of antibody patents

Working in the biomedicine department at Eli Lilly, Duane Marks says his work entails “pretty much all aspects touching on IP relating to our biomedicines”. Through the course of his career Marks, who is patent counsel in bioproducts, has practised in numerous areas including diagnostics, research tools, and medical devices.

One of his favourite things about his role at Eli Lilly is the need to stay aware of relevant matters going through the US courts and the US Patent and Trademark Office, and ensuring he has a close eye on any issues which could impact Eli Lilly’s biomedicine department.

In-house counsel work is “very rewarding”, Marks says, although he thinks he’s a better attorney for having previously worked in a large law firm: Baker & Daniels, now known as Faegre Baker Daniels.

One item he notes as particularly rewarding is being “part of a team focused on bringing solutions to patients”, an experience which, he notes, “you generally don’t have, at least not on a daily basis, if at all, at a law firm”. In-house work also provides the opportunity to work closely with different business units to prevent and solve legal issues, he explains.

Marks worked in Baker & Daniels’ IP department before moving in-house at Eli Lilly and Company, but he also has a scientific background. As well as law, Marks has qualifications in biology and chemistry, and he worked as a scientific consultant at Roche Diagnostics Corporation before starting his legal career, which also includes time as patent counsel at Roche.

According to Marks, having a scientific background in a technological field is “very important” to his role. It enables him to identify potential legal issues relating to the projects he supports and then apply the complexities of the technical subject matter to those legal issues, he says.

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