Jeffrey Wolfson, Patent Prosecution Practice Group Leader, 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 2013 and 2014 SuperLawyer
® in Washington, DC for Intellectual Property, 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 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.
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