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Haynes and Boone, LLP

Jeffrey A. Wolfson

Jeffrey A. Wolfson

Partner

Expertise

  • Asia
  • Chemical
  • Corporate Strategic M&A
  • FDA - Medical Device, Food and Cosmetics

WSG Practice Industries

Activity

WSG Leadership

Patent Law Workshop Group
Member
ABA Group
Member
Patent Law Group
Member
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, 2013-2019, 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 2017-2019 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.

Bar Admissions

Maryland, 1995
District of Columbia, 1996

Education

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
Areas of Practice

Asia | Chemical | Corporate Strategic M&A | FDA - Medical Device, Food and Cosmetics | Hatch-Waxman/ANDA | Healthcare and Life Sciences | Intellectual Property | Israel | Life Sciences | Mergers and Acquisitions | Oil and Gas | Patent Prosecution and Counseling | Patents | Pharmaceuticals | Technology | Technology Mergers and Acquisitions | Technology Transactions | Trade Secret Litigation | Trademarks

Professional Career

Significant Accomplishments

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.
Articles

The IP Beacon, April 2018
Haynes and Boone, LLP, April 2018

View the PDF version of the April 2018 IP Beacon. Are Works Generated by AI Subject to IP Protection? When Philip Dick wrote the 1968 novel "Do Androids Dream of Electric Sheep?," the inspiration for the 1982 film "Blade Runner," artificial intelligence was more fiction than science. Fifty years later, theHarvard Business Reviewpredicts that AI will be the single biggest technological development of our era, as transformative as the steam engine or electricity...

Federal Circuit Flips – Wi-Fi One v. Broadcom Holds That PTAB’s Time-Bar Determinations Are Appealable
Haynes and Boone, LLP, January 2018

On January 8, 2018, the U.S. Court of Appeals for the Federal Circuit issued itsen bancdecision inWi-Fi One, LLC v. Broadcom Corp., Appeal 2015-1944 (Fed. Cir. Jan. 8, 2018) (en banc) holding that Patent Trial and Appeal Board (“PTAB”) time-bar determinations under 35 U.S.C. § 315(b) in aninter partesreview (“IPR”) proceeding are appealable. Theen bancdecision overrules a panel’s earlier decision inAchates Reference Publishing Inc. v. Apple Inc.803 F...

The Supreme Court Resolves Key Sections of the Biosimilars Act in Sandoz v. Amgen
Haynes and Boone, LLP, June 2017

In recent months, in a unanimous decision authored by Justice Thomas, the Supreme Court issued its much-awaited decision in Sandoz Inc. v. Amgen Inc. et al., No 15-1039, considering two critical questions in the biosimilar approval mechanisms adopted in the Biologics Price Competition and Innovation Act of 2009 (“BPCIA” or “Biosimilars Act”)...

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