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Dorothy P. Whelan

Senior Principal

Minneapolis, MN
612-337-2509
[email protected]
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Dorothy P. Whelan Photo

Background

Dorothy P. Whelan is a Senior 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 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.

Education

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


Massachusetts Institute of Technology 1984
Polymers, S.M.


Yale University 1981
Chemistry, B.S.

Admissions

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

Other Distinctions

Selected Speeches and Publications

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,” 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 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.

Awards

“Life Science Star” by LMG Life Sciences (2017-2019).

“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).

What's trending with Dorothy

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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
Press Release
Recognition
News
News
March 9, 2020
Fish & Richardson Named Most Active Law Firm at Patent Trial and Appeal Board for Fourth Consecutive Year
Press Release
Recognition
News
Event
September 24th, 2020 | 12:00 pm EDT
2020 PTAB Bar Association Annual Conference
Speaking Engagement
Sponsorship
News
February 5, 2020
Fish & Richardson Releases 2019 Post-Grant Report
Press Release
News
News
August 15, 2019
Fish & Richardson Attorneys Receive Five “Lawyer of the Year” Awards from The Best Lawyers in America® 2020
Press Release
Recognition
News
News
August 24, 2020
Fish & Richardson Ranked #1 PTAB Law Firm in the U.S. for First Half of 2020 by Managing Intellectual Property
Press Release
Recognition
News
News
August 4, 2020
32 Fish & Richardson Attorneys Named 2020 “IP Stars” by Managing Intellectual Property Magazine
Recognition
News
News
June 2, 2020
Fish & Richardson Receives Top “Band 1” National Rankings for Intellectual Property and ITC Practices in Chambers USA 2020
Press Release
Recognition
News
News
April 21, 2020
Supreme Court Rules § 315(b) Time Bar Decisions Are Not Appealable in Thryv v. Click-to-Call
Legal Alerts
News
News
October 8, 2019
Fish & Richardson Attorney's Dorothy Whelan and Kim Leung Honored in the 2019 Top 50 Women in PTAB Trials by The PTAB Bar Association
Recognition
News
News
October 2, 2019
Fish & Richardson Receives Top Firm Rankings from LMG Life Sciences in Four Practice Areas
Press Release
Recognition
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June 20, 2019
Fish & Richardson Receives Top “Gold” Ranking from IAM Patent 1000 for National Patent Litigation Practice
Press Release
Recognition
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