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Fundamentals of Patent Prosecution 2013: A Boot Camp for Claim Drafting & Amendment Writing

Author(s): Michael A. Molano, Wendy A. Choi, Angelo J. Bufalino, Louis S. Sorell, Richard T. McCaulley, Kevin E. Noonan, Adda C. Gogoris, Jonathan Berschadsky, Jennifer R. Bush
Practice Area: Intellectual Property
Published: May 2013
PLI Item #: 41887
CHB Spine #: G1139

Jonathan’s practice focuses on patent prosecution, freedom to operate analysis, U.S. and international strategic patent portfolio planning and management, as well as counseling clients on strategic partnerships and technology acquisitions. He regularly performs IP due diligence investigations for investors and negotiate collaboration, technology and M&A agreements. His prosecution experience and electrical engineering background is often utilized in the litigation area.

Jennifer Bush focuses her practice on prosecuting patent applications in a wide range of technical fields, including computer software, Internet technologies, RFID, and business methods. Jennifer also has patent prosecution experience with life sciences and medical devices. Her practice also involves intellectual property strategy and counseling, as well as inter partes reviews, patent appeals and reexaminations. Jennifer has analyzed intellectual property issues for numerous due diligence and litigation matters.

In addition to providing legal services for her clients, Jennifer is a Lecturer-in-Law at the University of California, Davis School of Law, where she teaches patent prosecution and practice. She is also a member of the faculty at the Practicing Law Institute, and co-chair of the annual Fundamentals of Patent Prosecution bootcamp. She has lectured on topics related to patent law at the University of California, Hastings College of the Law and Santa Clara University School of Law.

During law school, Jennifer was awarded the faculty-selected Mabie Award for Outstanding Graduate, peer-selected Graduating Student of the Year, and served as Editor-in-Chief of the Santa Clara Law Review.

Prior to rejoining Fenwick & West, Jennifer was General Counsel with Apercen Partners LLC, serving as sole counsel for seven entities spanning a breadth of legal issues, including IP, employment, contract, securities, tax and general compliance matters. Before her time with Apercen Partners LLC, she was an associate at Fenwick & West from 2003 to 2011.

Angelo J. Bufalino has been practicing intellectual property law for over 35 years. He counsels clients in patent, trademark and copyright matters, including intellectual property litigation, transactional issues, licensing matters, and patent validity and infringement studies, and he has extensive, worldwide experience in prosecuting patents and trademarks. He has appeared in U.S. federal district and appellate court litigation relating to products in various industries and technologies, in inter partes proceedings before the U.S. Patent and Trademark Office and in proceedings before the Patent Trial and Appeal Board. He has been involved in approximately 30 patent, trademark and copyright trials. Mr. Bufalino serves a diverse range of clients with an emphasis on electrical and mechanical technology and consumer products.

Mr. Bufalino was selected for inclusion from 2005 to 2006 and from 2008 to 2015 in Illinois Super Lawyers. He was also selected by his peers from 2012 to 2015 for inclusion in The Best Lawyers in America in the fields of Patent Law and Trademark Law. In addition, Mr. Bufalino has been selected by his peers from 2013 to 2014 as a Leading Lawyer in Intellectual Property.

Wendy A. Choi is a member of the biotechnology, chemical, pharmaceutical, and medical technology practice teams in the firm's Patents Group. Ms. Choi focuses on complex patent prosecution and counseling and on IP strategy. She has more than 20 years of experience representing clients in the chemical, pharmaceutical, nanotechnology, biotechnology, cleantech, and medical device/diagnostic industries, ranging from start-up companies to large corporations in both domestic and international patent matters. She has a particular emphasis in Asia, energy, and biosimilars.

Ms. Choi advises clients on potential patent infringement issues and prepares invalidity and non-infringement opinions. Ms. Choi also represents companies in licensing negotiations, patent reissue, reexamination, and interference proceedings, and analyzes patents in litigation. She manages IP portfolios and the alignment of business strategies and has conducted extensive due diligence for IP transactions, licensing, and litigation support. In addition, she counsels clients on patentability, validity, and freedom-to-operate opinions; inventorship determinations; and trade secret protection.

Before entering the law, Ms. Choi was a research scientist at the Rohm and Haas Company, working in the polymer and plastics divisions.

Adda brings to the table 35+ years of experience in IP practice serving the pharmaceutical biotechnology and chemical industries, an international network and name recognition, and a high-energy, creative and practical problem solving approach.

Practice Concentration

One aspect of Adda’s practice is directed to preparing and prosecuting patents, developing patent portfolios, devising, reviewing and managing patent strategies and conducting patent audits.  Another aspect is focused on counseling: rendering exculpatory opinions (including those supporting PIV certifications) and pre-litigation assessments; directing freedom-to-operate investigations and analyses; developing strategy for and managing patent term extensions and Orange Book listings; and advising on Hatch-Waxman and more generally on drug development issues.

Adda has assisted numerous enterprises at home and abroad in conducting and defending due diligence investigations and in achieving resolution of emerging issues.  She negotiates and drafts technology transfer and other IP agreements (e.g., licensing, sponsored research, joint development, employment) and IP-related provisions of corporate transaction documents.

She also has a significant practice advising on contested and other adverse patent matters such as litigations, interferences, inter partes reviews, ex parte reexaminations, oppositions and third-party submissions.

Technology Range

Biotechnology: stem cells (directed differentiation and isolation of both embryonic and induced pluripotent) and related in vitro disease modeling; cancer (diagnostic and responsiveness markers, diagnostic methods; therapeutic targets, chemotherapeutic and immunotherapeutic agents and regimens, vaccines, multimodality treatments; bioinformatics of patient stratification); antibodies and antibody constructs; cytokines and immune response modulators; anti-pathogen and anti-cancer vaccines (human, animal); antibiotics, antivirals and lysin anti-infective agents.

Small molecule pharmaceuticals: nonsteroidal anti-inflammatories; anti-hypertensives; lower urinary track modulators; protease inhibitors; microtubulin inhibitors, ion channel modulators; dot1l inhibitors; CNS drugs (sigma1 and 2 receptor antagonists, serotonin and serotonin/norepinephrine re-uptake inhibitors, atypical antipsychotics), nutraceuticals, topical dermatological preparations (OTC and prescription); cosmetics and drug delivery systems.

Other technologies: medical devices; organic syntheses; process chemistry; nutraceuticals; dairy products and processing; biofuels; and specialty cellulose products.

Richard T. McCaulley, Jr.
Ropes & Gray LLP

Richard McCaulley is Co-Chair of the firm’s Intellectual Property Litigation practice. He represents companies in complex patent, and antitrust disputes involving a wide range of technologies, including GPS technology, computer security and access protocols, medical devices, chemical products and processes, mechanical and electrical systems, software, polymer phase morphology and polymer film products. Richard's extensive experience includes jury and bench trials in the federal courts. He also lectures law students on patent trial practice.

Kevin E. Noonan is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. An experienced biotechnology patent lawyer, Dr. Noonan brings more than 20 years of extensive work as a molecular biologist studying high-technology problems in serving the unique needs of his clients. His practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. He has also filed amicus briefs to district courts, the Federal Circuit and the Supreme Court involving patenting issues relevant to biotechnology. He has authored amicus curiae briefs in landmark patent and other cases in U.S. Courts of Appeals and the U.S. Supreme Court.

Dr. Noonan is a frequent speaker, commentator and author on a variety of intellectual property law topics. He is a founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law. In 2010, he was interviewed for a segment that aired on the television program "60 Minutes" that addressed the issue of gene patenting.

Published Articles

Founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law.

Contributing author, Regenerative Medicine Ethics: Governing Research and Knowledge Practices (Hogan, L., ed), Springer Press 2014

Contributing author, Claim Construction and the Federal Circuit, (The Intellectual Property Law Association of Chicago Litigation Committee, Manzo, E., ed.), West Publishing Co., 2007-2014

"The latest on the gene patenting case Association for Molecular Pathology v. Myriad Genetics," Westlaw Journal Intellectual Property, October 31, 2012, Vol. 19, Issue 14

Contributing author, Annual Review of Intellectual Property Law Developments 2010, (ABA Section on Intellectual Property Law, Thomas, L., ed), American Bar Association Press, (multiple years)

"An antidote to the politics of the human gene patenting debate,” SCOTUS blog, February 6, 2013

"The Supreme Court's Prometheus Decision and Its Meaning for Diagnostic Method Claims," Biotechnology Law Report, June 2012, Vol. 31, No. 3: 267-270

"Federal Trade Commission Rejected in 'Reverse Payment' Suit," CPI Antitrust Chronicle, June 2012 (2)

“FDA Issues Draft Guidelines for ‘Follow-on’ Biologic Drug Approval Pathway,” Pharmaceutical Compliance Monitor, April 9, 2012

"Supreme Court Sets Limits on the Bayh-Dole Act in Stanford v. Roche", BNA Life Science Law and Industry Report, July 1, 2011, p.1-3

"Little Light Shed on Method Claims Patent-Eligibility in Assoc. Medical Pathol. v. U.S. PTO", BNA Life Science Law and Industry Report, in press

Louis S. Sorell is Patent Counsel at Google Inc. in New York City.  Prior to joining Google in 2011, Mr. Sorell was in private practice, specializing in patent law.  Mr. Sorell received his B.E. degree in Chemical Engineering from Cooper Union, his M.S. degree in Chemical Engineering from Georgia Institute of Technology, his J.D. degree (cum laude) from Pace University Law School, and his LL.M. in Trade Regulation-Intellectual Property from New York University Law School.

He draws particular praise for his "very thorough and thoughtful work," as well as for his ability to explain complicated technology matters in layman's terms.

Chambers USA 2014


Michael Molano is a partner in the Palo Alto office of Mayer Brown’s Intellectual Property practice. He litigates intellectual property cases in federal courts and before the International Trade Commission. Mike serves as the Hiring Partner and IP Practice Leader for the Palo Alto office.

Mike is also a registered patent attorney with substantial experience in prosecuting patent applications in the electrical arts, as well as experience in drafting, negotiating and advising clients on IP aspects of corporate transactions.