Exhibit 5.2
April 18, 2022
IP Opinion
Dear Sir or Madam:
We have acted as intellectual property counsel to Shuttle Pharmaceuticals, Inc., a Maryland corporation (the “Company”), with respect to (i) the U.S. patents and U.S. patent applications (the “Applications”) and international patent applications made pursuant to the Patent Cooperation Treaty (“PCT Applications”) owned by the Company that were or are being prosecuted by us on behalf of the Company, as listed in Exhibit A (together, the “Company Patents”), and (ii) the in-licensed U.S. patent, as listed in Exhibit B (the “Licensed Patent”) (collectively referred to herein as the “Patent Matters”). We are rendering this opinion in connection with the sale by the Company of shares of its common stock pursuant to the Underwriting Agreement dated [ ], (the “Agreement”), by and among the Company and the underwriters listed on Schedule thereto (the “Underwriters”). Except as otherwise defined herein, capitalized terms used have the respective meanings given to them in the Agreement.
In connection with this opinion, unless stated otherwise herein, we have limited our review to the following documents: (i) the chain of title of the Patent Matters and (ii) our prosecution files pertaining to the Company Patents.
As to certain factual matters, we have relied upon a certificate of an officer of the Company and have not sought independently to verify such matters. Where we render an opinion “to our knowledge” or concerning an item “known to us” or our opinion otherwise refers to our knowledge, it is based solely upon (i) an inquiry of attorneys currently with this firm who have directly performed substantive legal services for the Company in connection with the prosecution of the Company Patents, (ii) receipt of a certificate executed by an officer of the Company covering such matters and (iii) such other investigation, if any, that we specifically set forth herein. We have conducted no further investigation.
With regard to our opinion in paragraph (ii) below, we have relied on the results of searches of the records of the USPTO relevant to the ownership of the U.S. Patents, Applications and PCT Applications. On the basis of the foregoing, in reliance thereon and subject to the limitations and qualifications set forth herein, it is our opinion that to our knowledge:
| i. | Exhibit A attached hereto sets forth an accurate list of the Company Patents for which we have acted as intellectual property counsel to the Company. |
| ii. | The Company is, according to the records of the USPTO, the sole assignee of record of the Company Patents and, as to the Licensed Patent, the licensor is, according to the records of the USPTO, the sole assignee of record of the Licensed Patent. To our knowledge, there are no pending or threatened claims by a third party to any inventorship interest or ownership interest adverse to that of the Company in any of the Company Patents. |
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| iii. | To our knowledge, with the exception of the USPTO’s review of pending patent applications in connection with the prosecution of such patent applications in the ordinary course, there is no post-grant proceeding, supplemental examination, derivation, inter partes review, interference, opposition, reissue, reexamination or other claim pending or overtly threatened in the United States challenging the rights of the Company in or to, or challenging the validity, enforceability or scope of, any of the Company Patents. |
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| iv. | To our knowledge, while there can be no assurance that any of the U.S. Applications will issue as a patent, no information known to us to be “material to patentability” (as such term is defined in 37 C.F.R. § 1.56) has been withheld by us with intention to deceive the USPTO in connection with the prosecution of the Company Patents. |
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| v. | To our knowledge, the Company has not received any claim of infringement of any United States patent held by any third party. |
| vi. | Based on searches using the patent number of the Patent Matters listed herein as a search inquiry or the Company name as a party in Docket Navigator litigation database (www.docketnavigator.com) as well as confirmation given by the Company, there are no disputes in respect of US patents listed in this opinion in the United Stated Federal District Courts, Patent Trial and Appeal Board of the United States Patent and Trademark Office, The United States International Trade Commission, and the United States Court of Appeals for the Federal Circuit. |
This letter is furnished, as of the date hereof, only to you in your capacity as the Buyer under the Agreement and is solely for your benefit in connection with the transaction of the Agreement. We assume no obligation to update such opinion to reflect any facts or circumstances which may hereinafter come to our attention or any changes in the law which may hereafter occur. This letter may not be relied upon by you for any other purpose, or furnished to, assigned to, quoted to, or relied upon by any other person, firm or other entity for any purpose (including any person, firm or other entity that acquires the shares from you) without our prior written consent, which may be granted or withheld in our sole discretion.
This letter is limited to the matters expressly set forth in this letter, and no opinion has been implied, or may be inferred, beyond the matters expressly stated. This letter speaks only as to law and facts in effect or existing as of the date hereof and we undertake no obligation or responsibility to update or supplement this letter to reflect any facts or circumstances that may hereafter come to our attention or any changes in any law that may hereafter occur.
Sincerely,
| MORGAN, LEWIS & BOCKIUS, LLP | |
Exhibit A
| Internal ID | | Title | | Application No. | | Application Date | | Patent No. | | Patent Date |
| 105441-5001-WO | | Dual Function Molecules For Histone Deacetylase Inhibition And Ataxia Telangiectasia Mutated Activation And Methods Of Use Thereof | | PCT/US2016/020573 | | 03-Mar-2016 | | | | |
| 105441-5001-US | | Dual Function Molecules For Histone Deacetylase Inhibition And Ataxia Telangiectasia Mutated Activation And Methods Of Use Thereof | | 14/636,736 | | 03-Mar-2015 | | 9,809,539 | | 07-Nov-2017 |
| 105441-5001-US- 01 | | Dual Function Molecules For Histone Deacetylase Inhibition And Ataxia Telangiectasia Mutated Activation And Methods Of Use Thereof | | 15/555,386 | | 01-Sep-2017 | | 10,745,352 | | 18-Aug-2020 |
| 105441-5001-US-02 | | Dual Function Molecules For Histone Deacetylase Inhibition And Ataxia Telangiectasia Mutated Activation And Methods Of Use Thereof | | 15/804,746 | | 06-Nov-2017 | | 10,730,834 | | 04-Aug-2020 |
| 105441-5001-US-04 | | Dual Function Molecules For Histone Deacetylase Inhibition And Ataxia Telangiectasia Mutated Activation And Methods Of Use Thereof | | 17/484,876 | | 24-Sep-2021 | | | | |
| 105441-5002-WO | | Method And Compositions For Cancer Therapies That Include Delivery Of Halogenated Thymidines And Thymidines Phosphorylase Inhibitors In Combination With Radiation | | PCT/US2018/012914 | | 09-Jan-2018 | | | | |
| 105441-5002-US | | Method And Compositions For Cancer Therapies That Include Delivery Of Halogenated Thymidines And Thymidines Phosphorylase Inhibitors In Combination With Radiation | | 16/475,999 | | 03-Jul-2019 | | | | |
| 105441-5004-WO | | Selective Histone Deacetylase Inhibitors For The Treatment Of Human Disease | | PCT/US2018/012971 | | 09-Jan-2018 | | | | |
| 105441-5004-US | | Selective Histone Deacetylase Inhibitors For The Treatment Of Human Disease | | 16/476,006 | | 03-Jul-2019 | | 11,034,667 | | 15-Jun-2021 |
| 105441-5004-US-01 | | Selective Histone Deacetylase Inhibitors For The Treatment Of Human Disease | | 17/315,567 | | 10-May-2021 | | | | |
| 105441-5005-WO | | Selective Histone Deacetylase Inhibitors For The Treatment Of Human Disease | | PCT/US2019/012770 | | 08-Jan-2019 | | | | |
| 105441-5005-US | | Selective Histone Deacetylase Inhibitors For The Treatment Of Human Disease | | 16/959,570 | | 01-Jul-2020 | | | | |
Exhibit B
| Title | | Application No. | | PCT Application Date | | Patent No. | | Patent Date |
| Method For Producing 2-Nitroimidazole Derivative | | 12/522,926 | | 17-Jan-2008 | | 8,030,338 | | 4-Oct-2011 |
| Pharmaceutical Composition | | 13/365,785 | | 16-April-2008 | | 8,202,898 | | 19-Jun-2012 |
| Pharmaceutical Composition | | 12/598,044 | | 16-April-2008 | | 8,258,165 | | 4-Sep-2012 |
| Pharmaceutical Composition | | 13/365,723 | | 16-April-2008 | | 8,258,166 | | 4-Sep-2012 |
| Pharmaceutical Composition | | 13/362,545 | | 17-Jan-2008 | | 8,420,687 | | 16-Apr-2013 |
| Pharmaceutical Composition | | 13/362,527 | | 17-Jan-2008 | | 8,450,356 | | 28-May-2013 |
| Pharmaceutical Composition | | 12/523,067 | | 17-Jan-2008 | | 8,541,459 | | 24-Sep-2013 |
