PETER R. MUNSON
IP Counseling & Patents
Peter Munson is a partner in the San Diego office of Wilson Sonsini Goodrich & Rosati. His practice focuses on all aspects of intellectual property, including strategic counseling, prosecution, litigation, licensing, and other transactions, as well as counseling on other intellectual property and business matters.
Peter provides comprehensive counseling to clients on intellectual property and related business matters. He has analyzed intellectual property portfolios and performed IP due diligence for both venture capital firms and businesses in a variety of investment environments, including mergers and acquisitions. He has written opinions, negotiated and drafted transactional documents, performed IP audits, and formulated strategies for, and carried out, company formations, structured spin-outs, license renegotiations and acquisitions, and out-licensing of intellectual property in such fields as pharmaceuticals, medical devices, immunology, molecular biology, proteomics, microarrays, and gene therapy.
Peter has litigated patent, trade-secret theft, trademark, and trade-dress disputes in a diverse range of technical areas, including pharmaceuticals, cosmeceuticals, molecular biology, microarray, bone-substitute materials, DNA-sequencing instruments, and dental implants. He has prosecuted patent and trademark applications before the U.S. Patent and Trademark Office, including managing the national and international patent prosecution docket for multiple start-up and major San Diego pharmaceutical, device, and biotechnology companies.
In addition to his legal career, Peter has worked as a chemist at Cytogen Corporation in New Jersey and at Agouron Pharmaceuticals (now Pfizer) in San Diego.SELECT CLIENTS:
- Adamas Pharmaceuticals
- Epeius Biotechnologies
- Lipocine, Inc.
- Ichor Medical Systems
- Meritage Pharma
- Mylan Laboratories
- NextWave Pharmaceuticals
- Pentec Health, Inc.
- Questcor Pharmaceuticals
- Santarus, Inc.
- SGX Pharmaceuticals
- Swedish Medical Center
- J.D., Franklin Pierce Law Center, 1997
Editor-in-Chief, IDEA - The Journal of Law and Technology; Student Speaker, 1997 Commencement Address
- M.S., Chemistry, State University of New York at Binghamton, 1992
- B.S., Education (concentration in the Life Sciences), Cornell University, 1986
- Member, American Bar Association
- Member, American Chemical Society
- Member, American Intellectual Property Law Association
- Member, Licensing Executives Society
- Member, San Diego Intellectual Property Lawyers Association
- Selected for inclusion in the 2013 and 2014 editions of Southern California Super Lawyers
- Received the Wiley W. Manuel Award for Pro Bono Legal Services (State Bar of California)
- Co-author with D.M. Hoffmeister, V. Norviel, S. Elamrani, and C. Andres, "New Exclusivity for Fixed-Dose Drugs Will Help Small Firms," Law360, April 28, 2014
- Co-author with J.J. Eisch and J.N. Gitua, "The Potential of Photochemical Transition Metal Reactions in Prebiotic Organic Synthesis: I. Observed Conversion of Methanol into Ethylene Glycol as Possible Prototype for Sugar Alcohol Formation," 34 Origins of Life and Evolution of the Bioshpere 441-54, 2004
- Co-presenter, "America Invents Act: Immediate Changes to Patent Law," WSGR Webinar, September 20, 2011
- Presenter, "Bioequivalence and the 'Same Active Ingredient' vis-à-vis Patentability," American Conference Institute's Hatch-Waxman Boot Camp, San Diego, California, July 18, 2011
- "Best Practices for the Life Sciences/Chemical Arts," American Intellectual Property Law Association, Spring 2009 Meeting, San Diego, California, May 14, 2009
- "How Not to Place Your Patent at Risk: Recent Developments in Inequitable Conduct Law, and the Duty of Disclosure for Inventors and Patent Practitioners," American Chemical Society, September 2006
- "Defending Charges of Willful Infringement: Is the Existence of a Substantial Defense Enough? and Other Lessons from the Knorr Case," American Chemical Society, April 2004
- "Intellectual Property Diligence in Financings and Other Transactions," American Chemical Society, October 2004
- "Patent Term Extension and Patent Term Adjustment," Wilson Sonsini Goodrich & Rosati, Internal Training Session, Palo Alto, California, November 12, 2004
- "How Festo Has Changed the Rights of Patent Holders," American Chemical Society, October 2002
- "20 Do's and Don'ts for Keeping Laboratory Notebooks," American Chemical Society, October 2002
- State Bar of California
- California Supreme Court
- U.S. District Court for the Central District of California
- U.S. District Court for the Eastern District of California
- U.S. District Court for the Northern District of California
- U.S. District Court for the Southern District of California
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Ninth Circuit
- U.S. Patent and Trademark Office