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Advanced Patent Prosecution Workshop 2014: Claim Drafting & Amendment Writing

 
Author(s): Rajiv P. Patel, Kenneth N. Nigon, Donald L. Zuhn, Jr., Jay P. Lessler
Practice Area: Intellectual Property
Published: Jul 2014
ISBN: 9781402422669
PLI Item #: 51828
CHB Spine #: G1192

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.


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).


Donald L. Zuhn, Jr., Ph.D., is a partner at McDonnell Boehnen Hulbert & Berghoff LLP, where his practice focuses on biotechnology and pharmaceutical patent prosecution, litigation, counseling, and licensing.  He received his Ph.D. from the University of Illinois at Chicago, and graduated summa cum laude from the John Marshall Law School, where he helped found the John Marshall Review of Intellectual Property Law.  Dr. Zuhn is also the editor and co-founder of the Patent Docs weblog (www.patentdocs.org), which focuses on developments in patent law, and which has been named to the American Bar Association's "Blawg 100," recognizing the 100 best legal blogs.


Kenneth Nigon has been an IP lawyer for 33 years.  Ken’s practice focuses on US and international patent protection for computer hardware, software, and business methods. Ken is a co-chair and a member of the Practising Law Institute faculty for the annual Advanced Patent Prosecution Workshop. Ken is a contributing author for Electronic and Software Patents: Law and Practice, a treatise published by BNA Books. Ken is a past-president of the Philadelphia Intellectual Property Law Association and has served on the board of directors and held many committee leadership positions in the American Intellectual Property Law Association where he currently serves as vice-chair of the Patent Relations with the USPTO Committee.  He earned recognition and is listed in Chambers & Partners America’s Leading Lawyers for Business, in The Best Lawyers in America and in Pennsylvania Super Lawyers.