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Advanced Patent Prosecution Workshop 2012: Claim Drafting & Amendment Writing

 
Author(s): Rajiv P. Patel, John A. O’Brien, Jay P. Lessler
Practice Area: Intellectual Property
Published: Jul 2012
ISBN: 9781402418242
PLI Item #: 34065
CHB Spine #: G1101

Jay Lessler concentrates his practice in domestic and foreign patent procurement, transactions involving intellectual property, client counseling, and patent litigation, primarily in the chemical, pharmaceutical, and computer software arts.

Working closely with inventors and in-house counsel, Jay devises effective strategies to build and protect intellectual property assets, from initial drafting of patent applications to post-grant proceedings. His experience includes:
• all areas of patent prosecution involving domestic and foreign patents
• reissues
• reexaminations
• patent term extension proceedings
• inter partes reviews
• licensing and joint development agreements
• conducting due diligence investigations
• conducting 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
• counseling regarding the listability of patents in the FDA Orange Book

He also has significant ANDA and biotech litigation experience.

Jay 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, and in 2016 and 2017.

Jay 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).


Rajiv Patel chairs the firm’s Patent Group. With clients, he also often serves in the role of defacto in-house patent counsel. In this role he helps companies develop and manage patent strategy, portfolio development, and patent prosecution. He also guides them in patent transaction and patent pre-litigation counseling and strategy. Further in this role he has helped companies strategically manage their patent budgets. Rajiv also has served as a temporary in-house patent counsel for a Fortune-500 electronics company where he oversaw their 1000+ asset patent portfolio, while managing outside counsel and annual budget.

Rajiv’s areas of expertise include complex software that include data analytics, financial transactions, image processing, and networked security. He also has experience with electrics, and semiconductors, consumer electronics, mechanical technologies, and medical software and devices.

Rajiv also is active with advising companies on patent disputes. He has led numerous ex parte and inter parte reexaminations, as well as inter parte review (IPR) proceedings representing third-parties and patent owners. Rajiv also has worked on district court patent litigation matters, including advising on Patent Office / District Court cross forum strategies. 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. Intellectual Asset Management magazine named him to the IAM Patent 1000: The World’s Leading Patent PractitionersThe Daily Journal has named Rajiv as one of the "Top Intellectual Property Attorneys" in California.

In his spare time Rajiv enjoys the hiking, backpacking, and camping with his family. He also follows 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.


Jack O'Brien founded the Law Offices of John A. O'Brien, P.C. in 2007. He brings to the firm over 40 years experience in complex electronics, digital processing, software, communications, information and imaging technologies, semiconductors, copiers, printers and other electrical equipment. He has tried patent cases, both jury and non-jury, in the Federal Courts, and has argued appeals in the Federal Circuit Court of Appeals. Mr. O'Brien has been involved in all phases of international licensing and counseling, as well as in patent prosecution and patent interference proceedings in the United States Patent and Trademark Office.

Prior to the founding of his firm, Jack O'Brien was a senior partner and member of the management committee of Fitzpatrick, Cella, Harper and Scinto, in New York City, where he practiced with the firm and its predecessors from 1967-2007. While at FCHS, he successfully represented Fortune 500 clients, including Canon, DuPont, Union Carbide, ITT and Magna Donnelly. Also while at FCHS, Jack O'Brien managed the filing and prosecution of United States patent applications of Canon, a company who is consistently on the USPTO annual list of the top 10 corporations obtaining United States patents. He began his career as a patent examiner in the electrical arts of the United States Patent Office (1963-67).

Mr. O'Brien has lectured on a wide variety of intellectual property issues for the American Intellectual Property Lawyers Association, the New York Intellectual Property Lawyers Association, the Practicing Law Institute and other groups. A list of Jack O'Brien's recent presentations and publications can be found at www.obrien-iplaw.com.
 
  
Education
J.D., Georgetown University Law Center, 1967
B. Electrical Engineering, Villanova University, 1963

Bar Admissions
The State of New York, 1968; District of Columbia, 1968; the US Court of Appeals for the Federal, Second And Third Circuits; US District Courts for the Southern and Eastern District of New York; and the United States Patent and Trademark Office.

Professional Activities
American Bar Association; New York State and the District of Colombia Bar Associations; New York Intellectual Property Law Association; American Intellectual Property Law Association.