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Background

Dorothy P. Whelan is a Principal in the Twin Cities office of Fish & Richardson. Ms. Whelan co-chairs the firm’s Post-Grant Practice Group. She was the first woman to serve on the firm’s Management Committee, and also served on the firm’s Compensation Committee.

Ms. Whelan’s practice emphasizes post-grant proceedings, client counseling, strategic patent portfolio design and management, due diligence investigations, and freedom-to-operate studies, particularly in the chemical and materials science areas. She has extensive experience in post-grant proceedings, having provided the strategic direction for well over 100 post-grant matters involving both challenging and defending patents. When the patents are also the subject of co-pending litigation, Ms. Whelan works closely with the firm’s litigation team to design and implement an integrated strategy.

Ms. Whelan develops creative, cost-effective solutions for her clients, which range from start-ups to Fortune 100 companies. Representative technologies include batteries, fuel cells, medical devices and materials, adhesives, optical films, polymer processing, pharmaceuticals, and filtration devices.

Ms. Whelan writes and speaks extensively on topics related to post-grant proceedings and is the co-host of Fish’s Post-Grant for Practitioners webinar series, as well as being a frequent speaker and panelist at industry and legal seminars. In previous years, Ms. Whelan spoke regularly at Fish’s Challenging Patent Validity in the USPTO webinar series. Ms. Whelan is also a frequent contributor to the firm’s dedicated post-grant website, www.fishpostgrant.com.

Education

J.D., Boston College Law School 1987
Member, Boston College Law Review
magna cum laude


S.M., Massachusetts Institute of Technology 1984
Polymers


B.S., Yale University 1981
Chemistry

Admissions

  • U.S. Patent and Trademark Office 1989
  • Massachusetts 1987
  • Minnesota 1995

Other Distinctions

Selected Speeches and Publications

"Post-Grant Pushes Forward in Life Sciences," Metropolitan Corporate Counsel, Contributor (September 17, 2015).

"Hot Issues in PTAB Trials," moderator, AIPLA/USPTO Road Show Series – Enhancing Patent Quality and Conducting AIA Trials at the USPTO (August 24, 2015 (San Jose, CA) and August 28, 2015 (Alexandria, VA)).

“Making Sense of Inter Partes Review Proceedings,” Cantor Fitzgerald’s Inaugural Healthcare Conference, Keynote Speaker (July 8, 2015).

Quoted, "The Unintended Consequences of IPR," Life Sciences Intellectual Property Review, June 16, 2015.

Co-lecturer for Patent Resources Group Advanced Patent Law Course, "Hatch-Waxman and Biosimilars: A Total Immersion Course Encompassing Strategies for Prosecution, FDA Regulation, Post-Grant Challenge, Litigation and Appeal," April 16-18, 2015.

"Post-Grant Patent Challenges: What Bio-Pharma Practitioners Need to Know," Boston Breakfast Series (October, 2014).

Co-Chaired Consero Group’s "Post-Grant Executive Roundtable" (September, 2014).

"PTAB AIA Trial Roundtable," hosted by USPTO (May, 2014).

"Inter Partes Review: Patent Owner’s Perspective," West Legal Education (March, 2014).

"Examining the Impact of Patent Reform on Hatch-Waxman Litigation and the Brand/Generic Wars," ACI Patent Reform (January, 2014).

Co-authored, Validity Challenges: District Court Vs. Patent Office, Law360, December 18, 2013.

"Understanding New Proceedings for Challenging Patent Validity (IPR, PGR, CBM)," co-presenter for Thomson Reuters Patent Disputes 2013 in Santa Clara, CA (November, 2013).

Ms. Whelan hosts and regularly speaks at the Post-Grant for Practitioners Webinar Series covering issues, statistics, strategy, and practice tips for those looking to learn the basics of these new proceedings, or gain an advanced understanding of the post-grant landscape. The following comprises the topics to date of the 2016 series:

Replays and materials for the 2016 series can be found here.
Replays and materials for the 2015 ​series can be found here​.​
Replays and materials for the 2014 series can be found here.​
Replays and materials for the 2013 series can be found here.
Replays and materials for the 2012 series can be found here.

Awards

"IP Star" by Managing Intellectual Property (2013-2016).

“Top 250 Women in IP” by Managing Intellectual Property (2016).

"Top 250 Women in IP" by Euromoney (2013).

Recognized in "The World’s Leading Patent Practitioners" by IAM Patent 1000 and recommended for post-grant procedures (2012-2013, 2016).

Named a "Top Patent Prosecutor" by Patent Research Review/Patent Buddy (2011).

Minneapolis/St. Paul Business Journal:  Women in Business/Industry Leader Award (2010).

The Best Lawyers in America– Intellectual Property (2014, 2013, 2011, 2008, 2007) and Patent Law (2016, 2015, 2011), and Minneapolis Patent Law Lawyer of the Year (2014).

Super Lawyer (2013, 2012, 2011, 2010, 2009, 2008, 2007, 2006, 2003).

What's trending with Dorothy

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Fish Patent Blog
September 21, 2016
PTAB Bar Association Officially Launched
PTAB Bar Association Officially Launched
Authors: Dorothy P. Whelan, W. Karl Renner, Thomas Rozylowicz
News
May 13, 2016
Fish & Richardson Announces Three Principals Named 2016 Global “Top 250 Women in IP” by Managing Intellectual Property
Press Releases
News
March 22, 2016
Fish & Richardson’s Post-Grant Report 2015
Press Releases
Event
April 2nd, 2017
Patent Resources Group (PRG): Pharma and Biotech Patents: A Hatch-Waxman and BPCIA (Biosimilars) Immersion Course Encompassing Prosecution Strategies, FDA Regulation, Post-Grant Challenge, and Litigation
Patent Resources Group (PRG): Pharma and Biotech Patents: A Hatch-Waxman and BPCIA (Biosimilars) Immersion Course Encompassing Prosecution Strategies, FDA Regulation, Post-Grant Challenge, and Litigation
Speaking Engagement
News
June 15, 2016
Fish & Richardson Named to IAM Patent 1000 for National Patent Litigation and Prosecution Practices
Press Releases
Fish Patent Blog
March 16, 2016
Fish Post-Grant Radio: Episode #1: Dorothy Whelan
Fish Post-Grant Radio: Episode #1: Dorothy Whelan
Author: Dorothy P. Whelan
News
October 30, 2015
Post-Grant Pushes Forward in Life Sciences
Articles
News
September 11, 2015
A Riddle Wrapped in a Mystery Inside an Enigma: The Biologics Price Competition and Innovation Act has ended up in the U.S. Court of Appeals for the Federal Circuit
Article
News
September 2, 2015
PTAB Misconduct Rule Won't Deter Hedge Fund Attacks
Article
News
July 1, 2015
Fish & Richardson Named to IAM Patent 1000 for National Patent Prosecution and Litigation Practices
Press Release
News
June 24, 2015
Principal Dorothy Whelan Quoted in "The Unintended Consequences of IPR" from LSIPR
Media Coverage
Articles
News
November 13, 2014
Fish & Richardson Has Three Principals Named “Intellectual Property Trailblazers & Pioneers” by The National Law Journal
Press Releases
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