Dorothy P. Whelan is a senior principal in the Twin Cities office of Fish & Richardson P.C. 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 hundreds of 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.
Quoted, “Looming Judge Fight Threatens Generics’ Favored Patent Forum,” Bloomberg Law (January 7, 2021).
Interview, “Breaking the Ice: Practice reinvented with patent challenges,” Minnesota Lawyer (November 12, 2020).
Quoted, “6 PTAB Issues That CameTo A Head in 2019,” Law360 (December 23, 2019).
Co-Author, “IPR and PGR: A Complex and Shifting Landscape,” Managing Intellectual Property (July 29, 2019).
Quoted, “Reviewing ‘A Tremendous Year of Change’ for the PTAB,” Managing Intellectual Property, (January 22, 2019).
“Recent Developments in Biopharma PTAB Practice,” co-author, NYIPLA (February/March 2017).
“Post-Grant Pushes Forward in Life Sciences,” Metropolitan Corporate Counsel, Contributor (September 17, 2015).
Quoted, “The Unintended Consequences of IPR,” Life Sciences Intellectual Property Review, June 16, 2015.
Co-authored, Validity Challenges: District Court Vs. Patent Office, Law360, December 18, 2013.
“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).
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).
“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 2020 series can be found here.
Replays and materials for the 2019 series can be found here.
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.
“Life Science Star” by LMG Life Sciences (2017-2020).
“Top 50 Women in PTAB Trials” by the PTAB Bar Association (2019).
“IP Star” by Managing Intellectual Property (2013-2020).
Recognized in “The World’s Leading Patent Practitioners” by IAM Patent 1000 and recommended for post-grant proceedings (2012-2013, 2016-2020).
“Post Grant Proceedings Attorney of the Year” by LMG Life Sciences (2018).
“Attorney of the Year” by Minnesota Lawyer (2017-2018).
“Top 250 Women in IP” by Managing Intellectual Property (2016-2020).
“Life Sciences MVP of the year” by Law360 (2017).
The Best Lawyers in America– Intellectual Property (2014, 2013, 2011, 2008, 2007) and Patent Law (2021, 2020, 2019, 2016, 2015, 2011), and Minneapolis Patent Law Lawyer of the Year (2014 and 2020).
“Top 250 Women in IP” by Euromoney (2013).
Named a “Top Patent Prosecutor” by Patent Research Review/Patent Buddy (2011).
Minneapolis/St. Paul Business Journal: Women in Business/Industry Leader Award (2010).
Super Lawyer (2013, 2012, 2011, 2010, 2009, 2008, 2007, 2006, 2003).
- Opinions and Strategic Counseling
- Patent Portfolio Management
- Patent Prosecution
- Patent Reform Updates
J.D. magna cum laude, Boston College Law School (1987) Member, Boston College Law Review
S.M., Polymers, Massachusetts Institute of Technology (1984)
B.S., Chemistry, Yale University (1981)
- U.S. Patent and Trademark Office 1989
- Massachusetts 1987
- Minnesota 1995
January 28th, 2021
2021 PTAB Bar Association Thought Leader Summit
January 14th, 2021 | 1:30 pm EST
Post-Grant for Practitioners Webinar | Post-Grant: 2020 Year in Review
November 18, 2020
Dorothy Whelan Interviewed By Minnesota Lawyer, "Breaking the Ice: Practice reinvented with patent challenges"
October 21, 2020
Legal Alert: USPTO Requests Comments on Discretion to Institute Trials Before the PTAB
September 29, 2020
Fish & Richardson Receives Top Firm Rankings and 14 Principals Named 2020 “Life Sciences Stars” by LMG Life Sciences
August 24, 2020
Fish & Richardson Ranked #1 PTAB Law Firm in the U.S. for First Half of 2020 by Managing Intellectual Property
August 12, 2020
Fish & Richardson Receives Top “Gold” Ranking from IAM Patent 1000 for National Litigation Practice; National Rankings in the Plaintiff Firm and Prosecution Firm Categories
August 4, 2020
32 Fish & Richardson Attorneys Named 2020 “IP Stars” by Managing Intellectual Property Magazine
June 2, 2020
Fish & Richardson Receives Top “Band 1” National Rankings for Intellectual Property and ITC Practices in Chambers USA 2020
April 21, 2020
Supreme Court Rules § 315(b) Time Bar Decisions Are Not Appealable in Thryv v. Click-to-Call
March 9, 2020
Fish & Richardson Named Most Active Law Firm at Patent Trial and Appeal Board for Fourth Consecutive Year
September 24th, 2020 | 12:00 pm EDT
2020 PTAB Bar Association Annual Conference