In the News

Haynes and Boone Advises Celanese in $800 Million Methanol Joint Venture

WASHINGTON, D.C. – Lawyers from Haynes and Boone, LLP assisted Celanese Corporation in creating an approximately $800 million joint venture with Mitsui & Co., Ltd. to develop and construct a methanol production plant designed to take advantage of the abundant new supplies of U.S. natural gas. The new joint venture will be known as Fairway Methanol LLC.

The facility, to be built near the existing Celanese acetyl complex in Clear Lake, Texas, will have a capacity of 1.3 million tons per year and is expected to start operations in 2015. >>

Washington, D.C. Super Lawyers Recognizes Three from Haynes and Boone

WASHINGTON, D.C. – Three Haynes and Boone, LLP lawyers have been named in the 2013 Washington, D.C. Super Lawyers annual award listing. >>



Recent Publications

The IP Beacon, December 2013

The IP Beacon is a Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law. >>

American Bar Association Landslide Guest Article: PTAB Rearranging the Face of Patent Litigation

It has been nearly a year since the Patent Trial and Appeal Board (PTAB) began directly accepting petitions from third parties to review and invalidate patents. Since that time, over 300 petitions for review have been filed, mostly for patents that are being asserted in concurrent district court litigation. >>



Jeffrey A. Wolfson

Partner
Co-Head, Patent & PTO Proceedings Practice Group

Washington, D.C.


800 17th Street, NW
Suite 500
Washington, 20006-3962
T +1 202.654.4565
F +1 202.654.4268

Áreas de Practica

Educación

  • 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
  • Chemical Engineer, Sc.B., 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
Jeffrey A. Wolfson

Jeff Wolfson, Co-Head of the firm's Patent & PTO Proceedings Practice Group, has focused his practice on intellectual property transactional matters for more than 17 years, with an emphasis on strategic client counseling and product review, patent opinion preparation, IP-related agreements, and patent portfolio acquisition and management, and due diligence in connection with mergers/acquisitions, project finance, and other secured loan transactions. His focus includes work in the pharmaceutical, petrochemical and chemical, and materials science fields, as well as business methods. Jeff's experience in various technology areas includes a wide spectrum of pharmaceuticals and drug formulations including those approved and those not yet approved by the FDA; drug delivery technology; petroleum and rig equipment and processes; petrochemicals including equipment, catalysts, polymers, and elastomer chemistry; temperature-responsive gels; immersed carbon arc technology; processing techniques; vending apparatuses; contact center analytics and other business methods and systems; food and flavor chemistry including frozen and chocolate-based confectioneries, and bakery product formulations; thermographic printing; gloves and footwear; specialty chemicals including hindered amine light stabilizers (HALS); medical devices; and industrial assembly equipment and processes.

Jeff has been named a 2013 SuperLawyer® in Washington, DC for Intellectual Property, was previously named a SmartLawyer by SmartCEO magazine in 2008, and is AV® Peer Review Rated Preeminent 5.0 out of 5 (highest ratings in professional competence and ethical integrity) by Martindale-Hubbell® Law Directory.  He has provided representation at the USPTO; analyzed, advised, and obtained numerous USPTO and foreign patents; prepared hundreds of invalidity, non-infringement, patentability, freedom to operate, and other product clearance opinions; and conducted numerous diligence evaluations, for clients in a wide variety of industries including pharmaceutical, polymer, petrochemical, manufacturing, healthcare, call centers, food & beverage, medical device, sports equipment, and others.

In addition to his law degree, Jeff holds an Sc.B. degree in Chemical Engineering.

Selected Client Representations

  • Counsel manufacturing and tech concerns as to shifting U.S. patent landscape, AIA, and Patent Office issues
  • Counsel pharmaceutical clients regarding patent issues in connection with ANDA filings
  • 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
  • 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

Selected Community Service and Professional Activities

  • Patent Lawyers Club of Washington, D.C. (2007-present)
  • Vice-President of Communications (2012-Present) and Activities Chair (2007-2012), Class of 1992, Brown University
  • Member (1995-Present); Regional Director (2000-2003); and Area Chair (1997-2000) of the Brown Alumni Schools Coalition
  • Pro Bono service award from Winston & Strawn LLP (2006)
  • Spotlight Award for distinguished community service from Brown University (2003)

Selected Speeches

Jeff is a frequent lecturer on domestic and international patent law issues, including the following presentations:

  • "America Invents Act (AIA) for Patent Litigators," co-presenter, June 18, 2013.
  • "The Race to the PTO: The First Inventor To File System," co-presenter, Jan. 25 and March 18, 2013.
  • "Biosimilars Pathway: Upcoming Issues," GPhA Annual Meeting, co-presenter, Feb. 20, 2013.
  • "IP Due Diligence in M&A Transactions - Identifying and Investigating IP Assets and Leveraging the Results During Deal Negotiations," co-panelist, Strafford Webinar, Nov. 8, 2012.
  • "IP People v. Corporate People - Why Can't We Be Friends!?" co-panelist, AIPLA 2012 Annual Meeting, Oct. 25, 2012.
  • "IP Due Diligence: War Stories," State Bar of Texas Annual Meeting, Houston, TX, June 15, 2012.
  • "Effective Affidavit Practice," 6th Annual UT Advanced Patent Law Institute, Alexandria, VA, January 20-21, 2011.
  • "The Deal From Hell," co-planned and presented, AIPLA Spring Meeting, Mergers & Acquisitions Committee, May 6, 2010.
  • "A New Patent Dance: The Biologics Price Competition and Innovation Act," Pharmaceutical Issues Committee panel presentation at IPO Annual Meeting, September 13, 2010.
  • "IP Due Diligence in the M&A Context," State Bar of Texas 23rd Annual Advanced Intellectual Property Law Course, Austin, TX, March 4-5, 2010.
  • "Willfulness After Seagate: Tips and Pitfalls for Drafting Opinions," 5th Annual UT Advanced Patent Law Institute, Alexandria, VA, January 21-22, 2010.
  • "Diligence in Preliminary Merger & Acquisition Evaluations," AIPLA Webinar, July 1, 2009.
  • "Balancing the PTO's IDS Plans and McKesson v. Bridge Over the Rule 56 Duty of Disclosure," 4th Annual UT Advanced Patent Law Institute, Alexandria, VA, November 13-14, 2008.
  • "Living (La Vida Loca) Under Your NDA: Strategies for Preliminary M&A Diligence," AIPLA Annual Meeting, Washington, D.C., October 23-25, 2008.

Selected Publications

Jeff's publications have included: 

  • "PTAB Rearranging the Face of Patent Litigation," American Bar Association Landslide, November 26, 2013.
  • "USPTO's Final Rejection of a Patent Isn't So Final," guest author, Law360, September 5, 2013.
  • "Kim Dotcom May Be Shooting Himself In The Foot," guest author, Law360, July 3, 2013.
  • "Infringement Liability May Exist For Foreign Manufacturers," co-author, Law360, June 6, 2013.
  • "Step Right Up and Adjust Your Patent Term: Court Finds Improper PTO Calculations," Haynes and Boone Alert, November 14, 2012.
  • "What Makes the Best Corporate/IP Partnership in M&A Transactions?" AIPLA 2012 Annual Meeting Conference Papers, Oct. 25, 2012.
  • "New And Improved Third-Party Submissions," guest column, Pharmaceutical Online, Sept. 13, 2012.
  • "Patent Reform: What Does It Mean for A Pharmaceutical Enterprise?" guest column, Navigating the Patent Road, Pharmaceutical Online, July 31, 2012.
  • "Breaking The Chains Of Prometheus: Practical Claim Drafting," co-author, Lexology, April 5, 2012.
  • "Biosimilars: Draft Guidance Documents Issued by FDA," co-authored with Kimberly Weinreich, February 14, 2012.
  • "Practice Tips Under the Patent Reform Rules," co-authored with Andrew Lowes and Dustin Johnson, September 16, 2011.
  • "Conformity Is A Virtue: The U.S. Patent And Trademark Office Proposes Changes To The Duty Of Disclosure To Match The Therasense Standard," co-author, Lexology, July 26, 2011.
  • "Patent Reform 2011: It Could Happen To You," co-author, Lexology, June 28, 2011.
  • "Proceed with caution: does that employment agreement have a proper IP assignment?" co-authored with Evert F. Uy, Lexology, June 9, 2011.
  • "How Much Would You Pay For This Lovely Expedited Examination? USPTO Approves Priority Utility And Plant Patent Application Examination," co-author, Lexology, April 5, 2011.
  • "Effective Affidavit Practices," co-authored with Evert F. Uy, UT Advanced Patent Law Institute Conference Materials, January 20-21, 2011.
  • "'Abbreviated' Biologics Applications: The Reality of Providing Biosimilar Products," co-authored with Evert F. Uy, IPO Annual Meeting Conference Materials, September 12-14, 2010.
  • "'Abbreviated' Biologics Applications: The Reality Of Providing Biosimilar Products," co-author, Lexology, September 8, 2010.
  • "The Supreme Court Rules On Bilski: Business Method Patents Survive," co-author, Lexology, June 29, 2010.
  • "U.S. Patent and Trademark Office Proposes Three-Track Patent Examination Initiative," co-author, Lexology, June 23, 2010.
  • "Management (and the Federal Circuit) torched our patent: what should we have done differently?" co-author, Lexology, May 10, 2010.
  • "Public and Confidential IP Due Diligence in Merger & Acquisition Evaluations," State Bar of Texas 23rd Annual Advanced Intellectual Property Law Course, March 4, 2010.
  • "Efficacious and Safe Drug Labeling Strategies - The Access to Affordable Medicines Act," Bloomberg Health Law Reports, Vol. 3, No. 2, February 2010.
  • "Coming to Terms," nature.com, February 5, 2010.
  • "Litigation Risk and Liability Danger from False Patent Marking in View of Forest Group, Inc. v. Bon Tool Co.," January 27, 2010.
  • "Maintaining Attorney-Client Privilege When Disclosing Opinion Letters in M&A Transactions," co-authored with L. Nguyen, Lexology, January 11, 2010.
  • "Zipping Your Greentech Patent Application Down the Line," Lexology, December 10, 2009.
  • "Jumpstart Your Patent Application Through Early Examination," Lexology, December 9, 2009.
  • "PTO Seeking Rulemaking Authority Despite Rescinding Proposed Claims and Continuation Rules," co-authored with K. Weinreich, Haynes and Boone Alert, October 12, 2009.
  • "Double Standards at the Federal Circuit," co-authored with Evert Uy, Lexology, October 1, 2009.
  • "Patently Complicated New Rules Still in Play: Tafas v. Doll on Interlocutory Appeal," Haynes and Boone Alert, March 30, 2009.
  • "Domestic Trouble From Foreign Patent Affairs," co-authored with G. George, Journal of the Patent and Trademark Office Society, Vol. 91:77-87, January 2009.
  • "Publication Clauses and Other Problems Lurking in Sponsored Research Agreements," co-authored with K. Timmer in Life Sciences, a publication of the American Health Lawyers Association, Vol. 2, Issue 3, December 2008.
  • "To CIP Or Not To CIP? There Is No Question," co-authored with E. Uy, IP Law360, November 21, 2008.
  • "Be Careful Where You Save That File," co-authored with G. George in IPLaw360, July 24, 2008.
  • "Preparing for (and Avoiding) the Courtroom," co-authored with R. Emerson in Nature Biotechnology, Vol. 26, No. 7, July, 2008.
  • "Product Clearance and U.S. Patent Opinions," Martindale-Hubbell's Counsel to Counsel, Feb. 13, 2004.
  • "Patent Flooding in the Japanese Patent Office: Methods for Reducing Patent Flooding and Obtaining Effective Patent Prosecution" in the IP Symposium issue of the Geo. Wash. Journal of Int'l Law and Econ. (1993-1994).

Selected Representative Experience


KMG Chemicals Inc. Acquisition of Ultra Pure Chemicals Subsidiaries
Represented KMG Chemicals, Inc., a global provider of specialty chemicals to select markets, in its $63.3 million acquisition of the Ultra Pure Chemicals subsidiaries of OM Group, Inc. located in the United States, England, Singapore, Malaysia and France.

Multi-Billion Dollar Pharmaceutical Sale
Served as U.S. counsel to Strides Arcolab Ltd. in its $1.6 billion sale of Agila Specialties Private Ltd., a generic drug maker of injectable medicines, to Mylan Inc., the second largest stand-alone generic drug maker in the world.

Deutsche Bank/Green Energy Team Hawaii Biomass Project
Represented Deutsche Bank Securities Inc., as Mandated Lead Arranger and Lender for a $76.1 million loan facility to fund construction of a 7.5-megawatt (net) biomass-to-energy facility on the island of Kaua'i, Hawaii.

Bayer Transaction
Represented KMG-Bernuth, Inc., a subsidiary of KMG Chemicals, Inc., in its $10.5 million sale of its animal health business.

“Green” Fly Ash Beneficiation Facility in Charles County, Maryland
Assisted Mirant Corporation (now GenOn Energy) with all contractual arrangements for a thermal fly ash beneficiation facility to be built at Mirant’s 1,467-MW Morgantown power plant located in Charles County, Maryland. The Morgantown fly ash beneficiation facility will be the largest thermal facility ever deployed in the United States. When completed, it will be capable of processing up to 400,000 tons of fly ash per year.

IP Due Diligence - Investment Fund
We conducted IP diligence of the patent and trademark rights of a complicated corporate family. Our strategic analysis demonstrated (i) the entity in which our client would be investing did not have sufficient rights to commercialize the existing technology and (ii) the inventive team had no ongoing obligations to transfer or even license the entity any improvements. We successfully negotiated an amendment to the existing License Agreement and implemented a Consulting Agreement, which collectively worked to guarantee the transfer of all the relevant rights into the entity being funded by our client.

Patent Prosecution - Video Gaming
We represent an individual pro bono in connection with her ongoing efforts to patent gaming technology that combines the social benefits of board games with the display and computational power of computer games.

Technology Licensing - Manufacturing
We negotiated a joint defense agreement with two parties in our client's downstream chain of distributors, exchanged information and our opinion of counsel regarding the irrelevance of the patent, narrowly tailored indemnification provisions to meet our client's needs, and prepared a press release responding to the improper interference of the patent holder.

Memberships

  • 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

Online Publications

12/16/2013 - The IP Beacon, December 2013
The IP Beacon is a Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

11/26/2013 - American Bar Association Landslide Guest Article: PTAB Rearranging the Face of Patent Litigation
It has been nearly a year since the Patent Trial and Appeal Board (PTAB) began directly accepting petitions from third parties to review and invalidate patents. Since that time, over 300 petitions for review have been filed, mostly for patents that are being asserted in concurrent district court litigation.

09/30/2013 - The IP Beacon, September 2013
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

09/05/2013 - Law360 Guest Article: USPTO's Final Rejection Of A Patent Isn't So Final
A final U.S. Patent and Trademark Office action rejecting a patent application may appear to sound the death knell for your company’s patent application. Fortunately, in patent prosecution, as with many mistakes in life, “final” does not really mean “final” — you still have opportunities to “make amends” and overcome the problem in various ways.

07/03/2013 - Law360 Guest Article: Kim Dotcom May Be Shooting Himself In The Foot
Internet tycoon Kim Dotcom recently claimed via Twitter that he is the inventor and patent-holder of a two-step authentication method employed by social media sites such as Facebook, Twitter and Google.

06/18/2013 - Not a Biotech Company? What Myriad Might Mean For You
You’ve seen all the articles about the Supreme Court’s decision in Assoc. for Molecular Pathology v. Myriad Genetics Inc. and the end of DNA patents, but what does this mean outside the biotech world?

06/06/2013 - Law360 Guest Article: Infringement Liability May Exist For Foreign Manufacturers
Many foreign manufacturers ignore U.S. patents because they wrongly assume they have no real economic risk and are not liable for infringing a patent in another country. But when products are being shipped to the U.S from another country, infringement liability may exist.

05/23/2013 - Monsanto Rounds Up Big Win for Self-Replicating Tech
The Supreme Court’s recent decision has seeded another patent protection feather in Monsanto’s increasingly large cap, in addition to providing guidance on application of the patent exhaustion doctrine in the case of self-replicating technology.

01/30/2013 - The IP Beacon, January 2013
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

11/14/2012 - Step Right Up and Adjust Your Patent Term: Court Finds Improper PTO Calculations
The U.S. Patent and Trademark Office (“PTO”) has been improperly calculating patent term adjustment (“PTA”) for some patents, specifically, in cases where prosecution of the underlying application involved the filing of a Request for Continued Examination (“RCE”) more than three years after the application filing.

10/12/2012 - The IP Beacon, October 2012
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

09/13/2012 - Pharmaceutical Online Guest Column: New And Improved Third-Party Submissions
One of the many opportunities enhanced by the America Invents Act (AIA)patent reform legislation, enacted inSeptember 2011, is the expanded submission of prior art references into pending patent applications of thirdparties, such as marketplace competitors and non-practicing entities.

07/10/2012 - Pharmaceutical Online Guest Column: Patent Reform: What Does it Mean for a Pharmaceutical Enterprise?
The America Invents Act (AIA), enacted in September 2011, has already modified various aspects of U.S. patent law and includes various provisions that phase in this September and March 2013, such as a completely new guiding statute addressing prior art and patentability — 35 U.S.C. § 102. In many ways, however, patenting will continue as usual, particularly for international companies who already prepare patent applications for international use.

04/30/2012 - The IP Beacon, April 2012
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

04/06/2012 - Breaking the Chains of Prometheus: Practical Claim Drafting
In Greek mythology, Prometheus stole fire from Zeus to give to mankind. It seems that Zeus is now reclaiming some of that fire in the guise of Mayo Collaborative Servs. v. Prometheus Labs., Inc., No. 10-1150 (U.S. Mar. 20, 2012), the Supreme Court’s latest decision addressing patent-eligible subject matter.

02/14/2012 - Biosimilars: Draft Guidance Documents Issued by FDA
The new abbreviated regulatory approval pathway for “biosimilar” and “interchangeable” types of biologic drug products was implemented in the Biologics Price Competition and Innovation Act of 2009 (BPCI Act) as part of the Patient Protection and Affordable Care Act of 2010. The details about the use of this pathway were left for further development through Food & Drug Administration (“FDA”) action.

09/16/2011 - Practice Tips Under the Patent Reform Rules
The long anticipated America Invents Act (the “Act”) was signed into law today. However, given that certain provisions of the Act are now in effect while others do not come online until March 16, 2013, innovating companies and individuals should consider the impact and timing of those provisions on their overall patent strategy.

08/16/2011 - The IP Beacon, August 2011
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

08/16/2011 - Proceed With Caution: Does that Employment Agreement Have a Proper IP Assignment?
The Supreme Court ruled earlier this week that the Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., et al.

07/26/2011 - Conformity is a Virtue: The U.S. Patent and Trademark Office Proposes Changes to the Duty of Disclosure to Match the Therasense Standard
The U.S. Patent and Trademark Office (“PTO”) has proposed changes to two rules that are designed to streamline the obligations of innovators and their patent practitioners to disclose information to the PTO in patent applications and reexamination proceedings.

06/28/2011 - Patent Reform 2011: It Could Happen to You
On June 23, 2011, the U.S. House of Representatives passed House Bill H.R. 1249 (the “Leahy-Smith America Invents Act”) by a vote of 304-117. This follows on the Senate’s 95-5 passage of bill S. 23 (the “America Invents Act”) back on March 8, 2011.

04/05/2011 - How Much Would You Pay for This Lovely Expedited Examination? USPTO Approves Priority Utility and Plant Patent Application Examination
On April 4, 2011, the U.S. Patent and Trademark Office (USPTO) issued a Final Rule implementing the prioritized examination track (“Track I”) of its new examination timing control procedures.

01/20/2011 - Effective Affidavit Practice

10/01/2010 - The IP Beacon, October 2010

09/08/2010 - "Abbreviated" Biologics Applications: The Reality of Providing Biosimilar Products

06/29/2010 - The Supreme Court Rules on Bilski: Business Method Patents Survive
On June 28, 2010, the United States Supreme Court announced its decision on Bilski v. Kappos regarding what inventions are eligible for patent protection. The decision affirms that business methods are patentable, although the specific business methods at the center of the case are not.

06/28/2010 - Accelerated Patent Examination Plan Extended
Most patent applicants can now accelerate the examination of a select number of patent applications in exchange for abandoning an equal number of unexamined, pending applications, according to an announcement issued by the U.S. Patent and Trademark Office (“PTO”) on June 24, 2010. The PTO’s official notice, titled “Expansion and Extension of the Patent Application Backlog Reduction Stimulus Plan” (the “Plan”), eliminates the requirement whereby only small entity applicants could participate in the Plan.

06/23/2010 - U.S. Patent and Trademark Office Proposes Three-Track Patent Examination Initiative
The United States Patent and Trademark Office (“USPTO”) is seeking public comment on a proposed three-track patent examination initiative that would provide applicants with greater control over the speed at which their applications are examined.

05/27/2010 - The Broken Patent System: A Threat to American Economic Security?
Chief Judge Paul Michel of the United States Court of Appeals for the Federal Circuit recently addressed the examiners of the United States Patent and Trademark Office (“USPTO”)  calling for “an improved patent system” as the “primary engine of American recovery and resurgence,” with a need for “faster, sounder and clearer patents, plus faster, stronger enforcement.”  These remarks seem well-received and are considered to be on-point by many in the innovation community, perhaps because they parallel the recent concerns of both consumers and technology companies.

05/10/2010 - Management (and the Federal Circuit) Torched Our Patent: What Should We Have Done Differently?
Just one day after the U.S. Court of Appeals for the Federal Circuit indicated that it would consider the current state of the inequitable conduct doctrine en banc in Therasense, Inc. v. Becton Dickinson and Co., a split panel of the Federal Circuit issued a decision in the case of Avid Identification Systems, Inc. v. Crystal Import Corp. affirming a lower court’s finding of inequitable conduct.

05/07/2010 - The IP Beacon, May 2010
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

05/04/2010 - Obviousness-Type Double Patenting As An Invalidity Defense

02/22/2010 - Don’t Rely on Reissue to Fix Your Patent Claims
Reissue is a post-issuance procedure that enables the correction of certain limited types of errors in a patent, but cannot be used merely for precautionary claim improvements. The Board of Patent Appeals and Interferences (BPAI) at the U.S. Patent & Trademark Office recently decided in a precedential opinion that reissue cannot be used to add a dependent claim “simply as a hedge against possible invalidity of the original claims.” Ex parte Yasuhito Tanaka, Appeal No. 2009-000234 (BPAI, Dec. 9, 2009) (per curiam).

02/01/2010 - Coming to Terms
You've found an investor who's willing to make a substantial investment in your biotech company—that's great news. But after the handshake, the next thing is to negotiate the term sheet outlining the structure of the transaction to ensure a true meeting of the minds.

02/01/2010 - Efficacious and Safe Drug Labeling Strategies - The Access to Affordable Medicines Act
This article discusses U.S. drug labeling strategies used by brand (also referred to as innovator) and generic pharmaceutical companies, including the most recent proposed drug labeling changes in the Access to Affordable Medicines Act (AAMA).

01/27/2010 - Litigation Risk and Liability Danger from False Patent Marking in View of Forest Group, Inc. v. Bon Tool Co.
In a case arising from the Southern District of Texas, the Federal Circuit recently issued an opinion that highlights the risks associated with marking products with patent numbers. See Forest Group, Inc. v. Bon Tool Co., No. 2009-1044 (Fed. Cir. Dec. 28, 2009) (slip opinion). 

01/19/2010 - The IP Beacon, January 2010
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

01/11/2010 - Zipping Your GreenTech Patent Application Down the Line

01/11/2010 - Maintaining Attorney-Client Privilege When Disclosing Opinion Letters in M&A Transactions

11/30/2009 - Jumpstart Your Patent Application Through Early Examination
The Patent and Trademark Office (“PTO”) published an official notice titled “Patent Application Backlog Reduction Stimulus Plan” on Wednesday, November 25, 2009 that it will now advance applications out of turn for small entity patent applicants on a temporary basis (74 Fed. Reg. 62,285).

10/12/2009 - PTO Seeking Rulemaking Authority Despite Rescinding Proposed Claims and Continuation Rules
The U.S. Patent and Trademark Office (“PTO”) has announced that the director has signed a Final Rule, which has not yet been published, that rescinds the hotly contested proposed claims and continuation rules. These rules would primarily have limited the number of patent applicant filings of: (i) continuation applications, (ii) Requests for Continued Examination (“RCEs”), and (iii) claims without examination support documents (“ESDs”) within a single application. The proposed rules were at the heart of a two-year legal battle that pitted co-plaintiffs Triantafyllos Tafas and GlaxoSmithKline (“GSK”) against the PTO and its director.

10/02/2009 - The IP Beacon, October 2009
The IP Beacon is a quarterly newsletter prepared by the Haynes and Boone Intellectual Property Practice to inform clients and friends of trends and changes in intellectual property law.

09/21/2009 - Double Standards at the Federal Circuit
Generally, “product” claims in a patent define a product in terms of its structure, properties, or composition. A product claim could thus cover a pharmaceutical composition or formulation with a well-characterized compound and useful excipients, a light-weight alloy used in windmill blades for renewable power, or an electrolyte composition for a fuel cell. In contrast, a “product-by-process” claim defines the product partly by how it is made, i.e., the claim recites process or method steps.

07/01/2009 - Living (La Vida Loca) Under Your NDA: Strategies for Ethical M&A Diligence
Dance Fever - Living (La Vida Loca) Under Your NDA: Strategies for Preliminary M&A Diligence, presented to AIPLA as a webinar, July 1, 2009.

03/30/2009 - Patently Complicated New Rules Still in Play: Tafas v. Doll on Interlocutory Appeal
The Federal Circuit in Tafas v. Doll (formerly Tafas v. Dudas) has now had its first review of the new rules proposed by the U.S. Patent and Trademark Office (“PTO”), based on an appeal of a summary judgment ruling.  The PTO has been attempting to implement these new rules relating to the patenting of inventions since November 1, 2007, which would impose fairly strict and burdensome requirements on patent applicants and companies attempting to protect their financial investment and incentive to develop such technology. 

02/26/2009 - The IP Beacon 2009
"The IP Beacon" is a Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

02/11/2009 - Patenting of Industrial Biotechnology: A Gamble That Pays Off
We have come a long way from that one word from “The Graduate.” Plastics, once conventionally manufactured from petroleum, is a field that has drastically expanded to include industrial biotechnology, which relies on micro-organisms rather than merely petroleum to develop biofuels, chemicals, and bioplastics. Enzymes or micro-organisms are essentially miniature biofactories that convert plant sugar, starch, or oil into biodegradable polymers used to make various products, including bottles, carpet, clothing, and cosmetics. With the new focus on renewable energy and resources, industrial biotechnology has enormous and increasing market potential.

02/11/2009 - Publication Clauses and Other Problems Lurking in Sponsored Research Agreements
Industry-sponsored research and clinical trials are the primary means for investigating the efficacy and safety of medical devices and pharmaceuticals. Enormous financial stakes are often involved in the outcome of these studies.
Originally appeared in Life Sciences, Vol. 2, Issue 3, December 2008 (American Health Lawyers Association Newsletter) - reprinted in Haynes and Boone's "The IP Beacon," Winter 2009.

11/24/2008 - To CIP Or Not To CIP? There Is No Question
IP Law360
As an inventor or decision maker for the business, you should know enough to discuss the forest before your patent counsel starts cutting the trees in making significant, irreversible decisions affecting your patent rights. 

11/20/2008 - Fall 2008 Haynes and Boone IP Beacon Newsletter
Intellectual Property articles and news from the Haynes and Boone IP lawyers.

11/12/2008 - Patent Process Claims Impacted by U.S. Court of Appeals for the Federal Circuit
The U.S. Court of Appeals for the Federal Circuit has issued a ruling in In re Bilski that modifies the test of whether a “process” qualifies as patentable subject matter.

10/23/2008 - Diligence in Preliminary Merger & Acquisition Evaluations
AIPLA Annual Meeting, Special Committee on Mergers & Acquisitions
After conducting the initial due diligence using public information to obtain and evaluate the intellectual property rights of a potential merger or acquisition target, you have entered a Non-Disclosure Agreement (NDA) to engage in more intimate discussions with your target to continue the deal process.

10/23/2008 - Living (La Vida Loca) Under Your NDA - PowerPoint Presentation
AIPLA Annual Meeting, Special Committee on Mergers & Acquisitions
Dance Fever - Living (La Vida Loca) Under Your NDA: Strategies for Preliminary M&A Diligence

09/08/2008 - The IP Beacon
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

07/24/2008 - Be Careful Where You Save That File
IP Law 360
Inventions are not patentable in the U.S. if they have been publicly disclosed, used, or sold for more than a year before filing an application, according to Section 102(b) of the Patent Act. This rule is based on the principle that an invention in the public domain should no longer be patentable.

07/01/2008 - Preparing for (and avoiding) the Courtroom
Nature Biotechnology
Intellectual property (IP) is often the most valued asset of biotech firms, especially startups. Two IP lawyers offer guidance on avoiding suits altogether, when to settle them and when to fight.

02/13/04 - Product Clearance and U.S. Patent Opinions
A study of certain business risks of launching products and services, and considerations in managing the risk associated with the launch by evaluating competitive patents and obtaining an opinion of counsel if needed.