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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

Recent Developments in Biopharma PTAB Practice,” author with Tasha Francis, NYIPLA (February/March 2017).

“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 2018 series:

Replays and materials for the 2018 series can be found here.
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

“Post Grant Proceedings Attorney of the Year” by LMG Life Sciences (2018).

“Attorney of the Year” by Minnesota Lawyer (2017-2018).

“Life Science Star” by LMG Life Sciences (2017-2018).

“Life Sciences MVP of the year” by Law360 (2017).

“Top 250 Women in IP” by Managing Intellectual Property (2016-2018).

“IP Star” by Managing Intellectual Property (2013-2018).

“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, 2016-2018).

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 (2019, 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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Event
November 29th, 2018 | 2:00 pm EST
IPO’s IP Chat Channel: Privity at the PTAB Since RPX
IPO’s IP Chat Channel: Privity at the PTAB Since RPX
Speaking Engagement
Webinar
Event
November 12th, 2018
The Center for American and International Law’s (CAIL) 56th Annual Conference on Intellectual Property Law
The Center for American and International Law’s (CAIL) 56th Annual Conference on Intellectual Property Law
Speaking Engagement
News
September 27, 2018
Fish & Richardson Announces 13 Principals Named 2018 “Life Sciences Stars” by LMG Life Sciences
Fish & Richardson Announces 13 Principals Named 2018  “Life Sciences Stars” by LMG Life Sciences
Press Release
Event
November 12th, 2018
The Center for American and International Law (CAIL) 56th Annual Conference on Intellectual Property Law
The Center for American and International Law (CAIL) 56th Annual Conference on Intellectual Property Law
Speaking Engagement
Event
November 13th, 2018 | 8:30 am EST
2018 PTAB Bar Association's Thought Leader Summit
2018 PTAB Bar Association's Thought Leader Summit
Sponsorship
News
September 13, 2018
Fish & Richardson Named 2018 General Patent Litigation Firm of the Year and Intellectual Property Firm of the Year by LMG Life Sciences
Fish & Richardson Named 2018 General Patent Litigation Firm of the Year and Intellectual Property Firm of the Year by <i>LMG Life Sciences</i>
Press Release
Event
April 15th, 2018 | 8:15 am CDT
Patent Resources Group (PRG) Spring 2018 Advanced Courses Program
Patent Resources Group (PRG) Spring 2018 Advanced Courses Program
Speaking Engagement
Event
March 22nd, 2018 | 7:00 am EDT
PTAB Bar Association: 2018 Annual Conference
PTAB Bar Association: 2018 Annual Conference
Speaking Engagement
Sponsorship
Event
February 7th, 2018 | 5:00 pm CST
Minnesota Lawyer 2017 Attorney of the Year
<i>Minnesota Lawyer</i> 2017 Attorney of the Year
Conference/Convention
Event
January 10th, 2018 | 1:00 pm EST
Post-Grant for Practitioners Webinar: 2017 Post-Grant Year in Review
Post-Grant for Practitioners Webinar: 2017 Post-Grant 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
September 18th, 2014
2014 Midwest IP Institute
Speaking Engagement
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