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Fundamentals of Patent Prosecution 2014: A Boot Camp for Claim Drafting & Amendment Writing

 
Author(s): Richard T. McCaulley, Angelo J. Bufalino, Adda C. Gogoris, Michael A. Molano, Jennifer R. Bush, Jonathan Berschadsky, Wendy A. Choi, Louis S. Sorell, Kevin E. Noonan
Practice Area: Intellectual Property
Published: May 2014
PLI Item #: 51805
CHB Spine #: G1184

Richard T. McCaulley, Jr.
Ropes & Gray LLP
Partner

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, 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.


Adda’s practice focuses on global patent procurement, patent portfolio management, and related counseling. She has assisted numerous enterprises in the development and maintenance of patent strategies in the areas of pharmaceuticals (including new molecular entities), biomolecules, and diagnostic systems, and advises on Hatch-Waxman issues such as patent term extension, Orange Book listing and Paragraph IV challenges. She also has considerable experience in IP due diligence investigations and in agreement drafting and negotiation.

Adda’s scientific experience includes organic molecules and synthetic pathways (in areas such as antihypertensives, lower urinary tract modulators, microtubulin inhibitors, protease inhibitors, ion channel modulators and CNS drugs); drug delivery systems, complex protein structure and architecture, cellular signaling, and multiplex assay systems.

In addition to her professional practice, Adda also writes and speaks frequently in the U.S. and abroad on various intellectual property topics. Since 2006, she has co-chaired an annual three-day seminar and clinic for the Practicing Law Institute.

Practice Areas

Chemical & Life Sciences patent prosecution, counseling and licensing, Patent Office Litigation

Industries

Alternative Energy, Semiconductors, Pharmaceuticals

Education

Cornell University J.D., 1978

Cornell University B.S., Chemical Engineering, 1975

Bar Admissions

New York State Bar

U.S. Patent and Trademark Office

Professional Affiliations

American Intellectual Property Law Association

New York Intellectual Property Law Association

International Association for the Protection of Intellectual Property (AIPPI)

Association of University Technology Managers

Association of the Bar of the City of New York Patents Committee

Awards

Selected as a “2013 Top Rated Lawyer” by American Lawyer Media and Martindale-HubbellTM

Selected for inclusion in New York Super Lawyers, 2006, 2013


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.


Jonathan Berschadsky is Chair of the Telecommunications and Networks Practice and is active in all aspects of Fitzpatrick, Cella, Harper and Scinto’s patent practice, focusing particularly on patent prosecution and litigation matters related to electronics, computer software and hardware and e-commerce. Specific technologies he works with include Internet-related hardware and software, digital imaging devices, memory systems, Digital Television (ATSC/DTV), audio/video media recognition, network security, database technologies, automotive interior hardware and software, wireless and landline telephony, financial transaction systems, consumer electronics and methods of conducting business. Mr. Berschadsky is also a member of the firm's Website and Technology Committees.

Mr. Berschadsky also conducts IP due diligence investigations in connection with mergers and acquisitions as well as for investors, and prepares opinions on issues of patent infringement, validity and enforceability. Mr. Berschadsky also advises clients on issues related to licensing, collaboration agreements, standards organizations and U.S. and International patent portfolio management.

Before going to law school, Mr. Berschadsky worked in the satellite communications industry, particularly on integrating, testing and launching commercial spacecraft.

Mr. Berschadsky is a regular instructor on basic and advanced patent prosecution for the Practicing Law Institute (PLI).

Mr. Berschadsky is recognized as an IP Star in the 2013 - 2015 editions of Managing Intellectual Property. He was selected by Patent Buddy as one of the Top Patent Prosecutors nationally in the Computer, Electrical, Software and Business Methods areas for 2011. He is also listed as a Top New York City Intellectual Property Litigator in the 2014 issue of Super Lawyers: New York Metro Edition.


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.