Paul Dietze

Practices

Industries

Education and Clerkships

J.D., University of Maryland School of Law, 1998, Order of the Coif

Ph.D., Organic Chemistry, New York University Graduate School of Arts and Sciences, 1983

M.Phil., Organic Chemistry, New York University Graduate School of Arts and Sciences, 1982

M.S., Organic Chemistry, New York University Graduate School of Arts and Sciences, 1980

B.S., Chemistry, Queens College, 1976

Admissions

Virginia

District of Columbia

U.S. Patent and Trademark Office

Court Admissions

U.S. Court of Appeals for the Fourth Circuit

Supreme Court of Virginia

District of Columbia Court of Appeals

U.S. District Court for the District of Columbia

Profile

Dr. Paul Dietze combines his experience as a chemist with his experience as a lawyer to counsel clients in all aspects of intellectual property in the pharmaceutical, chemical, and biotechnology arts. His experience as a chemistry professor and research chemist allows him to develop an in-depth understanding of the technological issues in these arts so that he can provide a thorough and comprehensive approach to solving the legal challenges facing his clients.

Dr. Dietze has more than 15 years of experience practicing intellectual property law. Prior to becoming a patent attorney, Dr. Dietze was a chemistry professor who taught a variety of graduate and undergraduate chemistry courses and supervised a funded research group. He also spent more than four years at the United States Food and Drug Administration as a review chemist in the Division of Oncologic Drug Products. Additionally, Dr. Dietze was a Postdoctoral Research Fellow in the Brandeis University Graduate Department of Biochemistry from August 1984 to September 1987. He is the author of more than 15 publications in peer reviewed scientific journals.

Dr. Dietze works closely with clients in preparing opinions addressing (non)infringement and/or (in)validity, portfolio analysis, developing and implementing strategic patent programs, prosecuting patents and providing litigation support.

Dr. Dietze has provided his clients with literally hundreds of non-infringement and/or invalidity opinions in the chemical and pharmaceutical arts. Dr. Dietze has considerable experience in the pharmaceutical industry, in particular, preparing opinions clearing generic versions of pharmaceutical products. He has extensive experience with the provisions of the Hatch-Waxman Act and has prepared opinions considering patents covering dozens of drug products. His clients include some of the world’s largest generic pharmaceutical companies.

Dr. Dietze has substantial experience in obtaining patent protection for his clients. Dr. Dietze has prosecuted and obtained patents for clients on new chemical entities, pharmaceutical delivery systems, cosmetics, flavors, foods and food additives, petroleum products, fragrances, polymers and polymer additives, glass coatings and catalysts. His experience in patent prosecution involves both domestic and foreign prosecution and includes drafting applications, responding to office actions, interviewing Examiners, obtaining patent term extensions, reissue proceedings, reexamination proceedings, preparing appeal briefs and arguing appeals at the Patent Trial & Appeals Board. He has successfully argued several appeals before the Patent Trial & Appeals Board.

Dr. Dietze also assists clients in other types of transactional matters such as due diligence analysis and patent licensing.

Newsletter

IP Beacon

The IP Beacon

The IP Beacon is a Haynes and Boone Newsletter highlighting current issues and trends in Intellectual Property Law. Read the latest issue...

What Chemists Do

Paul Dietze

What Do IP Lawyers Do?

Haynes and Boone partner Paul Dietze discusses the duties of an intellectual property lawyer in a "What Chemists Do" video by the American Chemical Society.

Selected Publications and Speeches

  • Co-author, "Infringement Liability May Exist For Foreign Manufacturers," Law360, June 6, 2013.
  • Presentation at the 244th American Chemical Society, Philadelphia, August 2012, "Satisfying the Enablement/Utility Requirement for Method of Treatment Claims."
  • Presentation at the 244th American Chemical Society, Philadelphia, August 2012, "Non-Traditional Careers in Chemistry: From Chemist and Professor to Patent Attorney."
  • Co-author, "Contemplating Pliva v. Mensing," August 16, 2011.
  • "Examiner Interviews: When, Why and How," 6th Annual UT CLE Advanced Patent Law Institute, Alexandria, VA, January 20-21, 2011.

Professional and Community Activities

  • Referee of research papers for Journal of the American Chemical Society, Journal of Organic Chemistry, Journal of Physical Organic Chemistry, and Journal of Chemical Education
  • Reviewer of research proposals for the Petroleum Research Fund of the American Chemical Society, the National Science Foundation, and the Israel Science Foundation
  • Chair, Physical Organic Chemistry Section B, 208th National Meeting of the American Chemical Society, Washington, D.C., August 1994
  • Chair, Physical Organic Chemistry Section B, 204th National Meeting of the American Chemical Society, Washington, D.C., August 1992
  • American Bar Association
  • American Chemical Society

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