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IP Fellows Start Patent Research Project

October 1, 2013

By Katherine MacFarlane (3L)

Thomas Jefferson School of Law Adjunct Professor Randy Berholtz and his team of Intellectual Property Fellows have begun a year-long IP Honors Research Project in furtherance of creating a rubric to aid bio-pharmaceutical companies and patent practitioners in deciding which countries to file for patent protection.

The goal of the honors research project is to provide life science companies and patent practitioners with a comprehensive guide regarding the countries where biopharma patents are filed, the countries where life science companies and patent practitioners should file for patent protection, and the factors that life science companies and patent practitioners should take into consideration when strategizing for international patent protection.

The project will consist of the following: (1) a paper addressing: the background of patents, the questions of where do and where should bio-pharmaceutical companies file patents, the development of a decision tree addressing each country’s rule of law and patentability, and a recommendation of further study in the area; (2) a survey querying practitioners as to their present filing habits and the rationale behind them; (3) a seminar titled “Where to File: A Rubric for Biopharma Practitioners” to be held Friday, April 11, 2014 at Thomas Jefferson School of Law; and (4) a published Law Review article summarizing all stages of the research project and its corresponding analysis.

Professor Berholtz is the Acting General Counsel and Secretary of Innovus Pharmaceuticals, Inc. He formerly served as Vice President, General Counsel and Secretary of ACON Laboratories, Inc.; Chief Operating Officer and General Counsel of IngleWood Ventures, a life sciences venture capital fund; and Acting General Counsel and Secretary, Nanogen, Inc., a public genomic products company.

This is the second IP Honors Research Project Professor Berholtz has led at TJSL. The first was in 2009 titled “Improving Patent Adjudication: An Updated and Revised Survey of Practitioners’ Experience and Options.”

This year’s participating IP Fellows include: Vince Davies (2L), Katherine MacFarlane (3L), Derek Midkiff (3L), Sumant Pathak (3L) and Richard Schurman (2L).

Vince Davies holds a B.S. in Biochemistry (University of California, San Diego) and a M.S. in Molecular Biology (San Diego State University). Davies is patent bar eligible and presently works at Nanovega, Inc. as a Legal Intern.

Katherine MacFarlane received her B.S. in Biology, with a minor in Economics, from the University of Massachusetts, Amherst. MacFarlane is patent bar eligible with plans to sit for the exam in December 2013. She is also currently working at the University of California, San Diego in the department of Family Medicine.

Derek Midkiff is a registered patent agent with the USPTO. Midkiff earned a B.S. in Nuclear Engineering from Purdue University with a concentration in Entrepreneurship and Innovation. Midkiff currently works as a Patent Agent, communicating with clients and filing patent applications in Thomas Jefferson School of Law’s Patent Clinic.

Sumant Pathak, is a registered patent agent with the USPTO.  Pathak received his B.S. in Electrical Engineering with a concentration in Nanotechnology from the University of California, Santa Cruz and is currently working as a Patent Agent with the San Diego IP Law Group.

Schurman received his undergraduate degree in Political Science with a focus in Political Economy, from the University of Washington, Seattle. Richard has an interest in patent litigation and is currently working at Masuvalley & Partners as a Junior Associate.