Jeff Wolfson

Practices

Industries

Education and Clerkships

J.D., George Washington University Law School, 1995, with honors; Executive Managing Editor, The G.W. Journal of Int'l Law & Economics (now Geo. Wash. Int'l Law Review); Publication Staff, AIPLA Quarterly Journal

Sc.B., Chemical Engineering, Brown University, 1992

Bar Admissions

Maryland, 1995

District of Columbia, 1996

U.S. Patent and Trademark Office

Court Admissions

U.S. Court of Appeals for the Federal Circuit

Court of Appeals of Maryland

U.S. District Court for the District of Maryland

District of Columbia Court of Appeals

U.S. District Court for the District of Columbia

Profile

Jeffrey Wolfson, head of the Patent Prosecution Practice Group, helps clients from Fortune 500 to start-up enterprises manage their intellectual property and related legal risk, both in obtaining and managing portfolios of U.S. and foreign patent and other IP rights, including patent prosecution and IP-related commercial agreements, and in counseling clients regarding their key product and service launches and related design-around opportunities across diverse technologies including generic pharmaceuticals, drug delivery devices and materials, petroleum automation technology, behavioral and predictive communication routing and analytics, automotive polymers, food products, sporting equipment, and more.

With 20 years of experience advising clients on a wide range of patent and other intellectual property issues, Jeff has in-depth experience representing clients outside the courtroom to minimize the risk of IP litigation, and to tip the strategic strengths when it cannot be avoided. By obtaining patents while considering the latest Federal Circuit and Supreme Court decisions; negotiating and drafting licenses, distribution and other agreements while considering critical client business goals; and by counseling clients to avoid third party patents when clients are developing new products and services, Jeff acts as a trusted business advisor to his clients as they face the challenges of conducting their businesses.  

Jeff, a registered patent lawyer with a chemical engineering education, provides representation at the USPTO; has obtained numerous U.S. and foreign patents; prepared hundreds of invalidity, non-infringement, patentability, freedom-to-operate, and other product clearance opinions; and has conducted numerous IP diligence evaluations in connection with mergers, acquisitions, and secured financial transactions. Jeff is frequently asked to speak and present webinars to IP organizations and trade associations on a variety of topics, including IP issues in Mergers & Acquisitions, patent prosecution and the effects of the America Invents Act, Inter Partes Review proceedings, and the U.S. Biosimilars regulatory framework.

Clients and colleagues have generously rewarded Jeff with accolades including being named a Washington, D.C. Super Lawyer® for Intellectual Property, Thomson Reuters, 2013-2015 and awarding him an AV® Peer Review Rated Preeminent 5.0 out of 5 (highest rating in professional competence and ethical integrity) by Martindale-Hubbell® Law Directory. Jeff was also honored in Intellectual Asset magazine's Patent 1000: The World's Leading Patent Practitioners, Globe White Page Ltd, 2014 for patent prosecution and IP transactions. In his limited spare time, Jeff volunteers regularly for Brown University Alumni Interviewing, has served as a college class officer for the last seven years, and enjoys spending time with his family including a teenager and an almost teenager.

Honors

Super Lawyers

D.C. Super Lawyers Recognizes Four Haynes and Boone Lawyers

Four Haynes and Boone, LLP lawyers have been recognized in Washington, D.C.’s 2014 Super Lawyers annual award listing.


Published by Thomson Reuters in May 2015

Deal of the Year

Cross Border Deal of the Year by Global M&A Network

Haynes and Boone Transaction Recognized as Cross Border Deal of the Year

The Global M&A Network has selected Strides Arcolab’s transaction with Mylan, Inc. as its M&A Atlas Global Major Markets Cross Border Deal of the Year in the $1-$5 billion category, recognizing Haynes and Boone, LLP’s role as U.S. counsel to Strides Arcolab. The award honors top deals, dealmakers and firms.

Selected Client Representations

  • Counsel manufacturing and tech concerns as to shifting U.S. patent landscape, AIA, and Patent Office issues
  • Prepare and prosecute patents for petrochemical services entity to strategically protect a U.S. company's core products and platform technology, and provide counseling and agreement assistance in support of same
  • Assist Strides Arcolab Limited in the $1.6 billion sale of its injectables business to Mylan, Inc.
  • Assisted KMG Chemicals, Inc. with IP diligence in its $60 million acquisition of OM Group’s UltraPure Chemicals business
  • Advise domestic and foreign technology-based clients regarding the scope and strength of numerous chemical and pharmaceutical compositions and processes
  • Counsel pharmaceutical clients regarding patent issues in connection with ANDA filings
  • Prosecute patents and provide counsel and licensing assistance relating to syngas/biofuels for a domestic startup
  • Counseled government clients on patent issues in loan guarantee project and ethanol wastewater recycling technology
  • Counseled domestic energy company on patent clearance for reactor equipment
  • Successfully supported trade secret litigation for a domestic manufacturer to recover damages and royalties for misappropriated sorbent technology for flue gas desulphurization
  • Counseled international company on trade secret issues in connection with steam generator design

Professional and Community Activities

  • Intellectual Property Owner's (IPO) Association (Pharmaceutical Issues Committee) 
  • American Intellectual Property Law Association (Chemical Practice, PCT, and Patent Law Committees) 
  • American Institute of Chemical Engineers 
  • D.C. Bar Association

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