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Advanced Patent Prosecution Seminar 2015: Claim Drafting & Amendment Writing

Author(s): Donald L. Zuhn, Jr., Ph.D., Kenneth N. Nigon, Jay P. Lessler, Rajiv P. Patel
Practice Area: Intellectual Property
Published: Sep 2015
PLI Item #: 59507
CHB Spine #: G1238

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).

Kenneth Nigon has been an IP lawyer for 32 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.

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.

Donald L. Zuhn, Jr. is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm's Biotechnology & Pharmaceuticals Practice Group. Dr. Zuhn has more than a decade of experience in all aspects of patent prosecution, litigation, counseling, and licensing. He represents a variety of clients, including biotechnology and pharmaceutical companies both large and small, and universities.

Dr. Zuhn joined MBHB in 1998. He maintained a full-time position as a law clerk while attending law school at night until his graduation in 2002.

Published Articles

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

Contributor to Patently-O, a patent law weblog.

Donald L. Zuhn, Jr. and Paul H. Berghoff, "The Evolution of the Written Description Requirement in the Context of Biotechnological Inventions", Midwestern Biotech Intellectual Property Law Symposium, June 2004

Kevin E. Noonan, Michael S. Greenfield, and Donald L. Zuhn, "Paradise Lost: The Uncertain Future of Research Tool Patents", Intellectual Property & Technology Law Journal, March 2003

"DNA Patentability: Shutting the Door to the Utility Requirement", The John Marshall Law Review, Summer 2001