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Advanced Patent Prosecution Workshop 2013: Claim Drafting & Amendment Writing

Author(s): Kenneth N. Nigon, Rajiv P. Patel, Jay P. Lessler
Practice Area: Intellectual Property
Published: Jul 2013
PLI Item #: 42642
CHB Spine #: G1147

Rajiv Patel chairs the firm’s Patent Group. With clients, he also often serves in the role of defacto in-house patent counsel for many of these companies as he manages patent strategy, portfolio development, patent prosecution and patent pre-litigation counseling roles for them. He also has served as a temporary in-house patent counsel for six-months for a Fortune-500 electronics company managing their large patent portfolio.

Rajiv has extensive patent dispute experience. He has led numerous ex parte and inter parte reexamination and inter parte review (IPR) proceedings (representing third-parties and patent owners) that have crossed over with district court patent litigation. Amongst his experiences has been defense of Amazon’s one-click patent in reexamination.

Rajiv was a former Adjunct Professor of Law at the University of California, Hastings College of the Law and is a program chair for Practising Law Institute patent programs such as Advanced Patent Prosecution Seminar and Post Grant Proceedings Seminar.

Rajiv has been recognized as a Northern California "Super Lawyer" in the area of Intellectual Property each year since 2006. From 2012 to 2014, Intellectual Asset Management magazine named him to the IAM Patent 1000: The World’s Leading Patent Practitioners. In 2014, The Daily Journal named Rajiv as one of the "Top Intellectual Property Attorneys of 2014".

In his spare time Rajiv enjoys coaching his kids' soccer and baseball teams, family camping trips and following his favorite childhood sports teams – New York Giants, New York Mets, and the Rutgers Scarlet Knights as well as his kids' favorite teams – San Francisco Giants, San Jose Sharks and Golden State Warriors.

Mr. Lessler concentrates his practice in domestic and foreign patent procurement, client counseling and patent litigation, primarily in the chemical, pharmaceutical, and computer software arts.

Working closely with inventors and in-house counsel, Mr. Lessler devises effective strategies to build and protect intellectual property assets, from initial drafting of patent applications to post-grant proceedings. His experience includes:

  • reissue
  • reexamination and patent term extension proceedings
  • domestic and foreign patent portfolios
  • conducting due diligence investigations and validity and freedom-to-operate studies
  • counseling clients in connection with the Hatch-Waxman Act and the Biologics Price Competition and Innovation Act 
  • preparation of Paragraph IV Notice letters and Offers for Confidential Access pursuant to the Hatch-Waxman Act

Mr. Lessler also has significant ANDA and biotech litigation experience.  His recent representations include:

  • Ascio Pharmaceuticals, Inc. v. Three Rivers Pharmaceuticals, LLC (D. Ga., Civ. No. 1:10-cv-1583)
  • Schering Corp., et al. v. Glenmark Pharmaceuticals, Inc. USA, et al. (D.N.J., Civ. No. 2:07-cv-01334)

Mr. Lessler has been the co-chair of Practising Law Institute’s (PLI’s) annual Advanced Patent Prosecution Workshop since 2006.  He was also a speaker at PLI’s Patent Boot Camp Workshop from 2002 to 2006.

Mr. Lessler has co-authored numerous chapters on Patent Law and the Hatch-Waxman Act, including the “Generic Drug-Approval Process: Hatch-Waxman Update” chapter in The Pharmaceutical Regulatory Process, Second Edition (edited by I. Berry) (2008), and the "Non-Obviousness, Regulatory Exclusivities for Pharmaceutical Products, Post-Grant Procedures," and "How to Prosecute a Biopharma Patent Application" chapters in Biotechnology And Pharmaceutical Patents (2007) (Aspen).

He has also presented talks on various areas of patent law, including at the New York Intellectual Property Law Association’s 2011 Fall Patent CLE (November 2011) (“Challenging the Validity of Patent”), the Houston Intellectual Property Law Association (September 2011) (“Can You Patent That? Recent Developments in Patentable Subject Matter”), the New York Intellectual Property Law Association’s 26th Annual Joint Patent Practice Seminar (April 2010) (“What is “Material Changed” under 35 U.S.C. §271(g)? Amgen v. Hoffmann-La Roche, 580 F.3d 1380 (Fed. Cir. 2009)”) and the Controlled Release Society (CRS) Annual Meeting, Young Scientist Workshop, “Intellectual Property” (Copenhagen, Summer 2009).

Mr. Nigon has 32 years of experience in Intellectual Property Law, including five years as Patent Counsel for a major consumer electronics corporation and 27 years with RatnerPrestia. In his work at RatnerPrestia, Mr. Nigon has acted as Patent Counsel for three U.S. laboratories of a major Japanese consumer electronics company, advised in-house patent counsel of a major U.S. research laboratory and managed the procurement and licensing of Intellectual Property for numerous other companies. Mr. Nigon has counseled clients in the full range of Intellectual Property matters. He has also served as an expert witness in litigation in the Eastern District of Pennsylvania.

At RatnerPrestia, Mr. Nigon chairs the Patent Preparation and Prosecution Group and RP’s Computer Architecture, Software, Business Methods, Semiconductor and Signal Processing practices.  He has served on the Management Committee, and held various other positions in the firm.

Mr. Nigon is the author of a chapter, "Drafting the Specification," of Electronic and Software Patents, Law and Practice 3rd ed. published by BNA Books and the American Intellectual Property Law Association (AIPLA), of “Advanced Specification Drafting Issues: Electronic and Computer Inventions,” The Computer & Internet Lawyer vol. 30, nos. 4 & 5, April, May 2013, "The New Written Description Requirement" Journal of the Patent and Trademark Office Society, vol. 84, no. 9, September 2002 and of "Patent Portfolio Management," The Patent Journal vol. 1, no. 11, September 2002.

Before he became an attorney, Mr. Nigon worked for nine years as an Engineering Programmer and Systems Programmer for a major U.S. computer manufacturer.

Mr. Nigon is an active member of AIPLA where he is currently serving as Vice Chair of the Patent Relations with the USPTO Committee. He has served as Treasurer of AIPLA, Chair and Vice Chair of the Patent Law Committee, Vice Chair of the Committee on Legislation and Chair and Vice-Chair of the Electronic and Computer Law Committee. He has also served as Co Vice-Chair of the Professional Programs Committee. Mr. Nigon has presented webinars on Patent Eligible Subject Matter for BNA and AIPLA in 2009, 2010 and 2011. Mr. Nigon has spoken at the AIPLA Midwinter Institute in 2000, at the AIPLA Spring Meeting in 2002 and at the AIPLA Annual Meeting in 2006. He has also spoken at several seminars sponsored by the AIPLA, including the Basic Electronic and Computer Law Practice Seminar (1994), the Advanced Electronic and Computer Practice Seminar (1998 and 2001) and at the AIPLA Basic Training Seminar (2000 and 2001). Mr. Nigon has also spoken since 2008 at the PLI Advanced Patent Prosecution Seminar, of which he is a Co-Chair, on considerations in drafting patent specifications.