Deborah Somerville has substantial experience in the management, protection, and enforcement of intellectual property rights for major U.S. and foreign clients. Her practice focuses on the issues confronting clients in the pharmaceutical, biotech, chemical and medical device industries. Ms. Somerville’s clients have included emerging and global biotech, medical device, and pharmaceutical companies, as well as research institutes, universities, and investment firms.

The contributions she has made to the life sciences community have been recognized by the New York Biotechnology Association, which awarded Ms. Somerville the 2011 “The Cure Starts Here” Business Leaders of the Year award. Additionally, she has been recognized by The Legal 500 United States (2013) and IAM 1000 – The World’s Leading Patent Practitioners (2013). She was also named a “Life Sciences Star” by LMG Life Sciences (2013).

Ms. Somerville counsels clients on the validity, scope, enforceability, and transfer of intellectual property rights. She actively guides clients in introducing new products and in developing intellectual property strategies and portfolios. While successfully procuring commercially significant patents, she has supervised the drafting of applications and their prosecution. She also negotiates licenses and conducts due diligence for corporate transactions. In addition, Ms. Somerville has considerable experience with patent litigation before the federal courts and inter partes proceedings.

Ms. Somerville is a U.S. contributing author for Pharmaceutical, Biotechnology, and Chemical Inventions: World Protection and Exploitation, which was published by Oxford University Press in February 2011.

Recent Publications

  • Consumer Watchdog v. WARF Stem Cell Case Could Test Myriad’s Reach,” July 29, 2013.
  • “Thoughts on Oral Arguments in Gene Patent Case,” Law360, April 17, 2013.
  • “Supreme Court Hears Oral Arguments on Whether Human Genes are Patentable,” April 16, 2013.
  • PerkinElmer – A Sign of What’s to Come for Diagnostics,” Law360, March 4, 2013.
  • “To Do Before March 16, 2013,” Feb. 5, 2013.
  • “Getting Creative,” Intellectual Asset Management, Jan. 1, 2005.
  • “Development in the U.S. Biotech Industry: Focus on Research Tool Patents,” June 4, 2004.
  • “The Value of “Research Tool” Patents in View of Integra v. Merck,” National Law Journal, Oct. 13, 2003. (Reprinted in Nov. 2003 issue of Corporate Counsel)
  • “The Biotech Patent: To License or Litigate?” Building and Enforcing Intellectual Property Value: An International Guide for the Boardroom, 2003.
bar and court admissions
  • New York
  • Ohio
  • Registered Patent Attorney: U.S. Patent and Trademark Office
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
professional organizations

The New York Biotechnology Association; Licensing Executives Society; New York Intellectual Property Law Association; the American Bar Association, Intellectual Property Law and Litigation Sections; the American Intellectual Property Law Association and the New York Academy of Science