Rolando Medina, PhD
Choate, Hall & Stewart LLP
Recognized for
Patent Prosecution
The Elite Counsel Perspective
Rolando’s patent prosecution judgment is exceptional, shaped by biomedical research and hundreds of patent analyses that deepen his biotechnology counsel.
Rolando’s patent prosecution judgment is exceptional, shaped by biomedical research and hundreds of patent analyses that deepen his biotechnology counsel.
Overview
Rolando Medina is a partner in Choate’s Intellectual Property group and heads its Patent Prosecution practice. He represents universities, start-ups, and mid-sized and large biotechnology and pharmaceutical companies on patent matters in biotechnology and the medical sciences. His work includes preparing and prosecuting patent applications, managing portfolios, and counseling clients on intellectual property strategy. The technologies he has addressed range from novel genes, antibodies, gene therapy, vaccines, antisense and stem cells to pharmaceutical formulations, peptide and antibody display technologies, nanotechnology and biofuels. His patent work also encompasses potential treatments and diagnostic methods for various diseases.
Alongside prosecution and portfolio counseling, Rolando advises on patent opinions, licensing and intellectual property due diligence. He has led hundreds of analyses involving patent landscapes and freedom to operate, as well as non-infringement and invalidity opinions. His due diligence work has arisen in mergers and acquisitions, venture capital financings, internal audits and licensing matters.
Before law school, Rolando conducted research at Yale University School of Medicine. As a postdoctoral fellow in James M. Anderson’s laboratory, he studied the function of occludin in epithelial cell tight junctions. His graduate research in Catherine H. Berlot’s laboratory examined the structure and function of interactions between the heterotrimeric G protein subunit Gqα and phospholipase C.
Representative Experience
Patent Prosecution and Counseling
- Managed and counseled on complex patent portfolios related to products in clinical trials for mid-sized biotech company.
- Performed due diligence and negotiated and drafted complex license agreement on behalf of start-up public company.
- Created strategic patent portfolio for start-up biofuel company leading to successful financing round.
- Assisted mid-sized biotech company with license and transfer of technology for creation of joint venture.
- Assisted in obtaining patent term extension due to regulatory delay for mid-sized biotech company.
Patent Trial and Appeal Board and Appellate Proceedings
- Kashiv BioSciences, LLC v. Amgen Inc., PTAB: Counsel for Kashiv in IPR proceedings challenging patents relating to methods of protein refolding and purification.
- Guardant Health, Inc. v. Foundation Medicine, Inc., PTAB: Counsel for Foundation Medicine in IPR proceedings defending patents protecting innovative comprehensive genomic cancer assays using next generation sequencing.
- Foundation Medicine, Inc. v. Guardant Health, Inc., PTAB: Counsel for Foundation Medicine in IPR proceedings challenging patents directed to methods for detecting genetic mutations.
Education
- University of Pittsburgh School of Law, JD (2003) cum laude
- Yale University, PhD (1999) Neuroscience, MPhil (1996) Neuroscience
- Westminster College of Salt Lake City, BS (1993) magna cum laude, Biology and Chemistry
Admissions
- Massachusetts
- U.S. Patent & Trademark Office
Honors & Recognition
- A World’s Leading Patent Practitioner by IAM Patent 1000 (2022-2026)
- Who’s Who Legal’s list of top Life Sciences transactional attorneys
- “Patent Star” by Managing Intellectual Property (2019-2026)
- Best Lawyers in America (2023-2026)
- “Life Sciences Star” by Benchmark Litigation
- The Legal 500 (2026)
Professional Associations
- Member, Boston Bar Association
- Member, Boston Patent Law Association
- Member, Boston Bar Association Diversity & Inclusion Section Steering Committee
- Former Co-Chair and Board Member, Massachusetts LGBTQ Bar Association
- Member, Boston Bar Association 2024 Annual Meeting Steering Committee
Publications and Presentations
- “Navigating the Regulatory-IP Nexus: Maximizing Exclusivity in an Evolving Policy Landscape,” moderator, Life Sciences Patent Network, April 2026
- “Policy direction – where are we now?,” moderator, Life Sciences Patent Network, May 2025
- “Best Practice – Traversing the New Patent Eligibility Framework,” moderator, Life Sciences Patent Network North America, May 2024
- “Going Global: How Can You Maximize the Potential of Your International IP Portfolio?,” moderator, Life Sciences Patent Network North America, May 2023
- “Biologics and Biosimilars,” moderator, Life Sciences Patent Network North America, April 2019
- “Does the US Government Have Rights to Your IP Under Bayh-Dole?,” moderator, Life Sciences Patent Network North America
