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

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, chair of the Patent Prosecution Practice Group, helps clients from Fortune 500 enterprises to start-ups 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. Jeff has assisted clients across various industries on technologies such as generic pharmaceuticals, drug delivery devices and materials, petroleum automation technology, behavioral and predictive communication routing and analytics, automotive polymers, food products and processing, leisure and sporting goods, and more.

With more than 22 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 counseling clients on critical IP issues when developing new products and services, Jeff acts as a trusted business advisor to his clients as they face competitive headwinds.

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 to IP organizations and trade associations on a variety of topics, including IP issues in Mergers and 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 recognized in Washington, D.C. Super Lawyers, Thomson Reuters, for intellectual property, 2013-2018, and awarding him an AV Peer Review Rated Preeminent 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, most recently in 2017-2018 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 10 years, and enjoys spending time with his family—even including the two teenagers.

Intellectual Property

IAM Patent 1000

Haynes and Boone Partners Ranked Among World’s Top Patent Lawyers by IAM Patent 1000

Haynes and Boone and seven of its partners, located coast-to-coast from California to Texas to Washington, D.C., were recognized in the 2018 edition of the independently-researched Intellectual Asset Management (IAM) Patent 1000 legal directory.


Published by Globe Business Media Group - June 2018

Selected Client Representations

  • Counsel manufacturing and tech concerns as to shifting U.S. patent landscape, AIA, and Patent Office issues.
  • Assisted private equity company in acquiring half-a-dozen pharmaceutical pipeline candidates from large brand pharmaceutical enterprise, with a focus on the Clinical Supply Agreements.
  • 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 $495 million acquisition of FlowChem and its $60 million acquisition of OM Group’s UltraPure Chemicals.
  • 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 FDA regulatory filings.
  • Negotiate and prepare IP-related agreements for diagnostic testing rights and co-branding licenses in connection with a joint venture transaction in China.
  • Counseled government clients on patent issues in loan guarantee project and ethanol wastewater recycling technology.
  • Successfully supported trade secret litigation for a domestic manufacturer to recover damages and royalties for misappropriated sorbent technology for flue gas desulphurization.

Honors

Super Lawyers

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

Eight Haynes and Boone lawyers have been featured in the Washington, D.C., Super Lawyers/Rising Stars directory, an annual award listing published by Thomson Reuters.

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

Selected Publications and Speeches

  • “Licensing Issues,” speaker, 13th Annual Advanced Patent Law Institute, March 1, 2018.
  • “Due Diligence in Competitor Licensing,” UT-Advanced Patent Law Institute at the U.S. PTO, March 11, 2016.
  • “IP Diligence War Stories & Lessons Learned,” AIPLA Annual Meeting, October 23, 2015.
  • “FDA’s Focus On Drug Appearance May Cause Ugly Problems,” co-authored with Evert Tu, Law360, August 25, 2015.
  • “FDA Throws the (Purple) Book at Biosimilars - Purple v. Orange,” co-authored with Evert Tu, The Purple Book, October 21, 2014.
  • “USPTO’s Final Rejection of a Patent Isn’t So Final,” co-authored with Evert Tu, Law360, September 5, 2013.
  • “New And Improved Third-Party Submissions,” co-authored with Tanya Faisal, Pharmaceutical Online Guest Column, September 11, 2012.
  • “Proceed With Caution: Does That Employment Agreement Have A Proper IP Assignment?” co-authored with Evert Tu, Lexology, June 9, 2011.
  • “‘Abbreviated’ Biologics Applications: The Reality of Providing Biosimilar Products,” co-authored with Evert Tu, IPO Annual Meeting Conference Materials, September 12-14, 2010.
  • “Coming to Terms,” author, nature.com, February 1, 2010.

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