Brian J. Amos, Ph.D. is a former research neuroscientist who represents academic and research institutions in the preparation and prosecution of patent applications worldwide, predominantly in the fields of biotechnology, medical therapeutics and pharmaceuticals. He works closely with scientists and Technology Transfer Offices to identify and inventory new patentable technologies; protect discoveries through patents; and commercialize intellectual property through licensing and development arrangements with other business entities.

Dr. Amos’ specific areas of technological experience include nucleic acid sequencing technologies, nucleotide analogs, siRNA, DNAzymes & ribozymes, antisense oligonucleotides, antibodies and immunotherapies, fusion proteins, vaccines including HIV vaccines, cancer therapies, EEG-based methods, medical devices, medical gas treatments, stem cell-based therapies, cardiac treatments, neurological treatments, diagnostic assays, 3-hybrid assay systems, cell lines, cellular delivery agents, nucleic acid-based nanotechnologies, small molecules, pharmaceutical formulations, and complete syntheses of natural products.

Because Dr. Amos works with patent litigators, his approach to patent prosecution is keenly formed by knowledge of how a patent may be challenged. Ultimately, what is being protected must be embodied in a one-sentence claim that clearly and succinctly describes the invention—a challenge for which deep technical and legal experience is vital, along with constant monitoring of changes in case law. He works with researchers and business people to understand thoroughly how and where the patent may be commercialized or licensed, and the implications of alternative and parallel means of covering the innovation. In addition to experience in all aspects of U.S. patent procurement, including reissue, reexamination and interference practice, he has extensive experience in international prosecution including before the European, Japanese, Chinese, Canadian and Australian patent offices, as well as European opposition practice. He coordinates U.S. and foreign prosecution with the goal of obtaining the most effective and strongest coverage available, with a particular focus on the most lucrative markets. He works with clients on the fast time line of European Opposition Proceedings when, once filed or issued, a window is briefly open to defend patents or invalidate others.

For example, he worked with a major cancer center to defend a patent for an antibody technology in a European Patent Opposition proceeding against multiple opponents. The client prevailed against competitors attempting to narrow the claim to secure a broad claim. Numerous different arguments were integrated into the defense in such a way that they did not compromise, and in fact reinforced, the defense against the multiple challengers.

Formerly a research scientist at New York University Medical Center, Dr. Amos is a core member of the highly experienced and technically deep Amster Rothstein & Ebenstein group that focuses in this area.

Dr. Amos received a Ph.D. in Neuroscience from the University of London in 1995 and graduated Magna Cum Laude from New York Law School in July 2003. He is admitted to the New York State Bar and is registered to practice before the U.S. Patent and Trademark Office.

Published Articles

• US Appellate Court boosts ‘diagnose and treat’ claims
   
  
  
• Exploring Viability Of 'Diagnose And Treat' Method Claims
   
  
  

• Successful Strategies for Diagnostic Method Patents
  Journal of Commercial Biotechnology (2017) 23(1), 60–64. doi: 10.5912/jcb783
  
   
  
  
• Differing diagnoses for European and US patents. Nature Biotechnology (2017) 35(4): 334-335
   
  
  

ARELaw Alerts

• ARE Patent Law Alert:
  USPTO GUIDANCE ON SUBJECT MATTER ELIGIBILITY OF METHOD OF TREATMENT CLAIMS
  
   
  
  
• ARE Patent Law Alert:
  “Diagnose and Treat” Claims Held Patentable By Federal Circuit - A Path Forward For Patentability
  
   
  
  

• ARE Patent Law Alert:
  Federal Circuit Reverses District Court on Patent Eligibility, Finding a Biological Method Patent Eligible
  
   
  
  

In The Press

• In The Press:
  IAM Reports on NATURE published paper "Differing Diagnoses for European and US Patents by Alan Miller, Ph.D and Brian Amos Ph.D
  
   
  
  
• In The Press:
  IP Watch Reports on US, EU Diverge On Medical Diagnostic Patents
  
   
  
  

Bar Admissions

• New York, 2003
• U.S. Patent and Trademark Office

Education

• J.D., New York Law School, 2003 (Magna Cum Laude)
• Ph.D. in Neuroscience, RFHSM, University of London, 1994
• B.Sc. (Hons.) in Physiology, UCL, 1990

Professional Associations & Memberships

• New York Intellectual Property Lawyers Association
• American Intellectual Property Law Association
• American Chemical Society
• Association of University Technology Managers