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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 2017 series:

Replays and materials for the 2017 series can be found here.
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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News
May 17, 2017
Fish Client Coherus BioSciences Prevails in ‘135 IPR Decision
Press Release
News
May 1, 2017
Dorothy Whelan & Karl Renner Quoted in Law360 Article, "4 Recent PTAB Decisions Attys Need To Know"
Media Mention
Event
January 11th, 2017 | 1:00 pm EST
Webinar | Post-Grant for Practitioners: 2016 Year in Review
Webinar | Post-Grant for Practitioners: 2016 Year in Review
Webinar
Event
May 10th, 2017 | 1:00 pm EDT
Webinar: Post-Grant for Practitioners: Ethical Issues at the PTAB
Webinar: Post-Grant for Practitioners: Ethical Issues at the PTAB
Webinar
Event
May 17th, 2017 | 11:00 am PDT
AIPLA 2017 Spring Meeting
AIPLA 2017 Spring Meeting
Speaking Engagement
Sponsorship
Event
November 3rd, 2016 | 11:00 am PDT
Life Sciences Summit 2016
Life Sciences Summit 2016
Event
August 28th, 2015 | 8:00 am EDT
AIPLA/USPTO Road Show Series - Enhancing Patent Quality and Conducting AIA Trials
Speaking Engagement
Event
April 16th, 2015 | 8:00 am EDT
Patent Resources Group (PRG) Hatch-Waxman and Biosimilars: A Total Immersion Course Encompassing Strategies for Prosecution, FDA Regulation, Post-Grant Challenge, Litigation and Appeal
Speaking Engagement
Event
April 9th, 2014
Post-Grant for Practitioners: Dramatic changes in district court litigation as a consequence of PTAB proceedings
Speaking Engagement
Event
March 27th, 2012
Webinar: Inter Partes Review Part I: Pretrial
Speaking Engagement
Event
November 5th, 2013
Patent Dispute Forum 2013
Speaking Engagement
Event
October 11th, 2011
Strategic Use of Post-Grant Proceedings in Light of Patent Reform
Speaking Engagement
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