IP Talk with Wolf Greenfield: Recent Episodes
Wolf Greenfield
In some of our previous episodes, we’ve explored the interesting paths that Wolf Greenfield attorneys have taken as they eventually made their way to IP law. One thing that separates Wolf Greenfield from other firms is the depth of real-world experience many of its attorneys possess. In fact, over half of the professionals at Wolf Greenfield worked in science and technology industries prior to entering law.
Kevin MacDonald, a Shareholder in Wolf Greenfield’s Biotechnology practice, is an ideal example. After earning a degree in biology at Boston College, Kevin went to England to get his Master’s in Molecular Biology and then back to North America for his PhD at McGill University’s Institute of Parasitology in Montreal. Before his graduate studies and eventually going to law school, Kevin worked as a Life Science and Healthcare Industry Analyst at the British Consulate-General in Boston.
In this episode of IP Talk with Wolf Greenfield, Kevin discusses his path from the world of science to IP law and his current work assisting clients with IP strategy, portfolio management, and patent prosecution and counseling.
Here are a few highlights from the conversation:
01:18 - Kevin’s background in biology
02:33 - How Kevin became interested in parasitology
03:10 - Serving as an analyst at the British Consulate-General
04:21 - Making the switch to law
05:38 - The challenges of transitioning from science to a legal career
06:21 - Kevin’s current practice at Wolf Greenfield
07:20 - Some of the most exciting things happening in biopharma today
08:18 - Kevin’s efforts as a board member of the British American Business Council of New England
Artificial intelligence (AI) is impacting nearly everything in society these days, including the world of biotechnology and life sciences.
In this episode of IP Talk with Wolf Greenfield, Janice Vatland, a Shareholder in Wolf Greenfield's Biotechnology practice, explains important IP considerations for turning groundbreaking discoveries that utilize AI into lasting business value.
With nearly 25 years of experience, Janice works with clients of all sizes, including universities, start-ups, and small to mid-sized companies. She also serves as Chair of Wolf Greenfield’s PTO Practice Committee.
Here are a few highlights from the conversation:
- 00:58 - Janice describes her practice at Wolf Greenfield
- 01:57 - The factors that led Janice from her work in science to IP law
- 05:25 - Janice explains how AI is being used in biotech today
- 06:51 - AI systems cannot be listed as inventors, and that creates challenges for companies using AI
- 08:05 - Additional issues with AI that companies need to be mindful of
- 10:54 - Companies are eager to use AI to gain a competitive advantage
- 11:53 - Key IP protection considerations for companies using AI
- 13:16 - As patents on AI-derived drugs become more common, new legal challenges may arise as companies seek to defend their portfolios
- 16:49 - With science, technology, and AI all moving and changing so quickly, it’s critical for companies to constantly be monitoring and updating their IP strategies
Photonics is rapidly transforming from a primarily academic discipline into a driving force of industrial innovation. As part of this transformation, photonics companies need to treat their intellectual property as a forward-looking business asset.
In this episode of IP Talk with Wolf Greenfield, Michele Moresco, a shareholder in the Electrical & Computer Technologies practice, explains how a combination of thoughtful patenting, robust trade secret protection, early coordination, and litigation readiness can help companies thrive in this competitive and fast-evolving field.
Prior to joining Wolf Greenfield, Michele worked as a research scientist at Photonic Corporation and was also a postdoctoral associate at MIT, where—among other things—he led the operations of a DARPA-funded project to develop a silicon photonics fabrication platform for high volume manufacturing.
Here are a few highlights from the conversation:
01:15 - Michele describes his work at Wolf Greenfield.
02:23 - An overview of photonics—what it is and where we will see its impact.
04:22 - A comprehensive photonics IP strategy goes far beyond simple patent filings and procurement.
06:31 - The intellectual property strategy should be developed early as a company transitions from being an academic initiative to commercialization.
07:55 - Thoughts on the importance of protecting trade secrets.
09:33 - Multiple levels of the supply chain should be covered by a company’s IP strategy.
11:12 - Michele offers an explanation of omnibus applications.
12:58 - Adopting comprehensive defensive strategies early may help deal with competitor disputes in the future.
14:47 - It’s critical for the legal and technical teams to stay properly aligned as the organization grows.
Happy New Year from all of us at Wolf Greenfield.
In this episode of IP Talk with Wolf Greenfield, we take our annual look back at the year just concluded and ahead to the new year, 2026, just begun.
From anticipated activity, such as the forward march of artificial intelligence (AI) to unexpected developments, most prominently the new procedures at the PTAB, it was an eventful year.
Here are a few highlights from the conversation:
- 00:53 - Scott McKeown discusses the new administration’s impact on the PTAB
- 02:55 - Ed Russavage offers suggestions for dealing with the backlog of patent applications waiting for examination at the USPTO
- 03:58 - Christina Licursi on the growth of artificial intelligence
- 04:54 - Dan Young believes strong, creative claiming strategies are critically important in today’s environment
- 06:39 - In the Pharmaceutical industry, Jonathan B. Roses sees the potential for easier treatment of diagnostic method claims in 2026
- 08:27 - Zach Piccolomini on the evolving landscape for standard essential patents
- 09:52 - Greg Corbett provides a summary of the factors that may result in an increase in litigation in 2026
- 10:39 - Christina Licursi sees AI’s impact on law firms and clients growing throughout 2026 and in the years beyond
We’re pleased to feature Steve Brown in this episode of Wolf Greenfield’s Alumni Spotlight series. He was previously a technology specialist in Wolf Greenfield’s Biotechnology Practice.
Today, Steve serves as Associate General Counsel at Orna Therapeutics. Orna is reshaping RNA therapeutics to open an entirely new world of possibilities in the treatment of disease.
Here are some highlights from Steve’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.
00:47 - Steve’s current responsibilities at Orna
02:19 - Making the transition from a law firm into corporate roles
03:26 - An overview of Orna Therapeutics
05:18 - Steve’s favorite memory of Wolf Greenfield
07:25 - When Steve thinks of his time at Wolf Greenfield, what comes to mind?
09:10 - Steve’s dream travel destination
10:09 - His favorite movie
In this episode of IP Talk with Wolf Greenfield, we continue our series of conversations with Wolf Greenfield attorneys about the unexpected paths that led them to IP law.
Jerry Hrycyszyn is a litigation shareholder at Wolf Greenfield. He’s an experienced trial lawyer focusing on patent litigation and post-grant proceedings. Suresh Rav is a litigation associate, representing clients in federal district courts and before the International Trade Commission (ITC).
Prior to entering law, both gentlemen were professionals outside the legal industry. Jerry served as an officer in the US Navy and Suresh worked as a Quality Control Scientist. Here are a few highlights from their conversation:
01:00 - Jerry describes his service with the US Navy and subsequent work as an environmental engineer.
04:04 - Suresh’s work as a quality control scientist and the pivot to IP law.
06:55 - Jerry and Suresh explain the skills and perspectives from their previous careers that have given them an unexpected advantage in IP law.
09:38 - The aspects of IP law that were challenging to learn coming from a different professional background.
11:15 - Suresh and Jerry offer advice for those looking to transition from another field into IP law.
Getting from point A to point B in IP law is rarely a straight line. In fact, many attorneys have successful careers in other fields before entering the legal world. That was the case for Wolf Greenfield Shareholder Christina Licursi, who was initially working in business management. Today, Christina focuses her legal practice on global portfolio management, counseling, and advising clients on a wide range of intellectual property matters.
In this episode of IP Talk with Wolf Greenfield, Christina offers insight into her journey, what led to an interest in IP and how she has applied non-legal skills to her practice.
Here are a few highlights from the conversation:
- 01:04 - Christina's path to IP law
- 04:51 - Getting a dual degree helped open the door to Wolf Greenfield
- 07:49 - How "jumping into the deep end" in her first business management position helped years later in IP law
- 09:44 - Dealing with "imposter syndrome" and other challenges at the beginning of a legal career
- 11:14 - Advice for those transitioning into IP law
The Wolf Greenfield Summer Program gives aspiring attorneys a firsthand look at life inside of a thriving law firm. Participants are assigned to a specific Wolf Greenfield practice group, but they are also exposed to multiple practices to offer a 360-degree view of the firm’s diverse services.
This year’s program featured ten members. Seven of them joined us on this edition of IP Talk with Wolf Greenfield:
● Christina Gray: attends University of New Hampshire, Franklin Pierce School of Law
● Kaylah Birmingham: a PhD candidate at Weill Cornell Graduate School of Medical Sciences
● Leannah Schmitt: a PhD candidate at Harvard University
● Fayth Wisehart: attends University of Virginia School of Law
● Kyle Evans: a PhD candidate at Harvard University
● Leah Cravitz: attends Boston College Law School
● Neha Krishna: a rising senior at the University of Pennsylvania
Here are a few highlights of their conversation:
- 01:54 - How the associates heard about Wolf Greenfield’s Summer Program and what led each to apply
- 04:08 - Technology specialist interns share surprising aspects of the experience
- 05:50 - Favorite projects and experiences
- 07:45 - How the program prepares participants for their legal careers
- 11:25 - Returning for a second year to the program, Neha shares how this year’s experience differs from the previous year
- 12:10 - Advice for future participants
Trade secrets aren’t static. Companies should regularly reassess the status of their trade secrets and make necessary adjustments to ensure they remain protected at all times. In this episode of IP Talk, shareholder Rob Jensen offers advice on how companies should approach an annual trade secret assessment.
01:00 - Why this is a good time of year to review trade secret protections
01:40 - Exploring trade secret inventory and common mistakes
03:37 - How the value of a trade secret impacts how it should be protected
04:42 - Ensuring employee confidentiality
05:40 - Things to keep in mind across industries
07:28 - Rob’s final words of advice regarding trade secrets
For many, the journey to IP law is circuitous. And that’s undoubtedly true for Wolf Greenfield Shareholder Dan Young and Technology Specialist Colin White. Both had interesting careers outside of the legal industry before helping biotech companies tackle their most complex IP challenges.
In this episode of IP Talk with Wolf Greenfield, Dan and Colin offer insight into their journeys, what led to an interest in IP, how they apply non-legal skills today and other interesting insights. This episode is part one in a series about unexpected paths to IP law.
01:21 - Dan and Colin on what they did before transitioning into IP law
03:44 - How each decided to enter the IP law sector
05:45 - Transferable skills they’ve taken from their previous careers and now use today
07:49 - Challenges Dan and Colin faced upon making the jump
09:29 - Dan and Colin’s advice to someone interested in transitioning to IP law
We’re pleased to feature Trevor Day in this episode of Wolf Greenfield’s Alumni Spotlight series. Trevor, who was with the firm for more than six years, was an associate in Wolf Greenfield’s Mechanical Technologies Practice and also served as a Technology Specialist and a Patent Agent.
Today, Trevor is Senior Counsel – Patents at YETI. Here are some highlights from Trevor’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.
00:52 - Trevor shares what his day-to-day activities at YETI look like
01:45 - The impact Wolf Greenfield had on Trevor’s career
03:01 - Trevor’s favorite Wolf Greenfield memory
04:46 - How the people at Wolf Greenfield made his experience both enjoyable and beneficial
05:25 - Trevor’s dream vacation destination
06:16 - What TV show is capturing his interest these days
Wolf Greenfield recently promoted four attorneys to the position of shareholder. Stuart Duncan Smith, Anant Saraswat, Jessica von Reyn, and Adam Wichman. The promoted attorneys’ legal and technical know-how covers a range of practice and technology areas, including biotechnology, pharmaceutical, patent, litigation, and post-grant proceedings.
In this episode of IP Talk with Wolf Greenfield, we’ll introduce you to each of the new shareholders. Here are the highlights:
01:13 - Stuart Duncan Smith, Litigation Practice
06:05 - Adam Wichman, Post-Grant Proceedings Practice
12:02 - Jessica von Reyn, Biotechnology Practice
18:50 - Anant Saraswat, Post-Grant Proceedings Practice
2025 promises to be another busy year for intellectual property law. In this episode of IP Talk with Wolf Greenfield, you’ll hear Wolf Greenfield attorneys from a variety of practice areas reviewing some of the top issues of 2024 and offering their insights on what to expect in the months ahead. Here are some of the highlights:
01:02 - Chelsea Loughran’s thoughts on The University of California v. Broad Institute, a federal court case involving competing patent applications for the CRISPR-Cas9 gene-editing system
02:25 - Zach Piccolomini is watching the Unified Patent Court (UPC) for upcoming decisions in the standard essential patent space and “fair, reasonable and non-discriminatory” royalties
03:34 - Jonathan Roses with insight on recent Orange Book developments and what to expect with the new administration
05:31 - Jen Wang offers advice for dealing with rejections in the wake of the Federal Circuit overturning a 40-year-old obviousness test for design patents in the LKQ v. GM case
06:34 - Scott McKeown on noteworthy 2024 developments at the USPTO and some thoughts for what might happen in 2025
08:43 - John Strand on the Dewberry case, which was just argued before the Supreme Court (a decision is expected in the spring)
10:23 - Gabe McCool discusses the BIO Secure Act
Phil Hamzik is an Associate in Wolf Greenfield’s Pharmaceutical practice. From protecting key platform technologies to advising on drug product life cycle management, Phil works closely with pharmaceutical and biotechnology companies to develop IP strategies aligned with their business goals.
Phil also serves as the first Chair of Wolf Greenfield's LGBTQ+ Affinity Group. Additionally, he’s on the Board of Directors of the Massachusetts LGBTQ Bar Association, working to connect and empower LGBTQ+ attorneys through networking, law student mentoring and scholarship, legislative advocacy, and more. Phil also served as Co-Chair of the Greater Boston Legal Services Associates Drive, helping raise record amounts for legal aid for low-income families. Phil has been recognized as a Leading IP Practitioner by World IP Review, and as one of World IP Review Diversity’s Top 100 People in IP.
In this episode of IP Talk with Wolf Greenfield, Phil discusses his work with pharma clients and his activities outside the office. Here are some of the highlights:
01:25 - Phil’s current responsibilities and focus areas at Wolf Greenfield
02:00 - Notable topics and issues in 2024
02:52 - The differences in working on IP strategies for organizations of all sizes, from large pharmaceutical and biotechnology companies to startups
03:47 - Phil elaborates on his various activities on behalf of the LGBTQ+ community
04:48 - The importance of Wolf Greenfield’s commitment to having firm members active in community issues
05:23 - Phil discusses Wolf Greenfield’s fundraising for the annual Greater Boston Legal Services Associates Fund Drive
06:11 - A look toward 2025
Ryan MacDougall is the Chief Business Development Officer for Wolf Greenfield. Since joining the firm in 2010, he has worked closely with the firm's executive leadership, management, and practice groups to build and implement strategies that have made Wolf Greenfield one of the largest IP law firms in the US.
Utilizing his in-depth knowledge of the intellectual property space, Ryan maintains a strong focus on client experience and satisfaction as he oversees the firm’s Client Services Department, which comprises business development, marketing, and communications.
In this episode of IP Talk with Wolf Greenfield, Ryan discusses milestones in his career and the many ways business development for the legal industry has changed in the past 15 years. Here are a few highlights of the conversation.
01:00 - Ryan’s career to becoming Wolf Greenfield’s Chief Business Development Officer
03:01 - The biggest changes for legal industry marketing and business development in recent years
05:45 - Wolf Greenfield’s approach to working with clients
06:55 - What sets Wolf Greenfield apart from competitors
08:02 - Key moments that have influenced Ryan’s career
09:35 - A memorable piece of advice
10:28 - Experiences from business travel
13:03 - Activities outside of work
Dan Rudoy is a shareholder and executive committee member at Wolf Greenfield. As part of the Electrical & Computer Technologies Practice, Dan works closely with clients developing technology in a wide variety of areas including artificial intelligence, bioinformatics, electronics, genomics, machine learning, medical devices, and software. Many of these clients are developing technology at the intersection of life sciences and electrical and computer technology. One example is the application of machine learning to the analysis of genomic data.
In this episode of IP Talk with Wolf Greenfield, Dan discusses the opportunities and challenges that patent holders face as they navigate these new and ever-changing technologies. Here are a few highlights of the conversation.
01:06 - The questions clients have about AI and the challenges they are facing
03:58 - New problems IP holders face using GenAI
06:59 - Impact of the quickly evolving AI landscape on a company’s IP strategy
08:32 -The biggest issues and challenges generated by the application of machine learning to the analysis of genomic data
10:04 - How the use of open source software impacts IP strategy
12:05 - AI’s impact on trade secrets - both domestically and internationally
14:55 - Guidance for clients as they move forward with executing a strong IP strategy reflecting the use of AI and machine learning
Tonia Sayour is a patent, trademark, and copyright attorney in Wolf Greenfield’s New York office. She has nearly two decades of experience counseling clients in all areas of intellectual property law. Tonia also frequently speaks at diversity and inclusion events.
In this episode of IP Talk with Wolf Greenfield, Tonia discusses her legal career, current topics like AI, Supreme Court cases, and balancing the demands of a busy job with raising three children. Here are a few highlights of the conversation.
01:02 - What led Tonia to a career in law
05:09 - Describing her IP law career over the past two decades
06:58 - The advantages of being a “jack-of-all legal trades”
08:52 - The ways AI may impact the legal profession
10:46 - Tonia’s involvement in a pair of Supreme Court cases
13:57 - How Tonia’s involvement in diversity and inclusion efforts have impacted her career
16:08 - Juggling the demands of work and being a mother to three children
19:07 - The advice Tonia would give her younger self
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The Wolf Greenfield Summer Program gives aspiring attorneys a firsthand look at life inside of a thriving law firm. Participants are assigned to a specific Wolf Greenfield practice group, but they are also exposed to multiple practices to offer a 360-degree view of the firm’s diverse services.
This year’s program featured nine associates and one technology specialist intern. Four of them are featured on this edition of IP Talk with Wolf Greenfield:
- Neha Krishna: a rising senior at the University of Pennsylvania
- Ben Nickerson: attends the Northeastern University School of Law
- Katie Schneider: attends the University of New Hampshire Franklin Pierce School of Law
- Katherine Wade: attends the Chicago-Kent Law School and is a Patent Paralegal in the Biotechnology practice group
Here are a few highlights of their conversation.
01:10 - How the associates heard about Wolf Greenfield’s Summer Program and what led each to apply
03:12 - One of Neha’s favorite projects this summer
03:57 - Katie and Katherine discuss how the summer program has prepared them for what’s next in their legal career
05:28 - What surprised Ben this summer
06:46 - Advice for those considering the summer program
Artificial intelligence has extraordinary potential, but it also presents a number of daunting challenges. One is the high energy consumption of the computer chips required to drive the programs. Lightmatter is developing unique photonic technologies that reconstruct how computer chips calculate and communicate, allowing data to move at much higher speeds than is possible today. The young company has raised over $420 million to date and is now valued at over $1.2B.
Dr. Darius Bunandar is founder and chief scientist of Lightmatter. He and his team have worked closely with Wolf Greenfield in recent years to develop and execute a strategy to protect its intellectual property. Randy Pritzker co-chairs the Electrical & Computer Technologies Practice at Wolf Greenfield.
In this edition of IP Talk with Wolf Greenfield, Darius and Randy discuss how AI and supercomputing may be transformed by Lightmatter’s photonic technologies and how IP has assisted Lightmatter.
01:31 - Darius provides background about Lightmatter and the company’s most recent developments
03:04 - Randy explains why IP is valuable to Lightmatter and gives an overview of the company’s IP strategy
06:57 - Darius and Randy discuss the teamwork that’s necessary to develop and execute an effective IP strategy
09:34 - Randy examines how the IP strategy has helped Lightmatter, both in the early years and how it has changed as the company has matured
11:43 - Having just reached unicorn status with a $1.2 billion valuation, Lightmatter is excited about the future
12:18 - Darius and Randy enjoy working with each other
Meaghan Luster focuses her practice at Wolf Greenfield on patent litigation. Meaghan’s experience includes conducting pre-suit diligence, fact and expert discovery, claim construction, and motion practice in US district courts and the US International Trade Commission (ITC). Prior to joining Wolf Greenfield, Meaghan served as a judicial law clerk for Judge George O’Toole, Jr. of the US District Court for the District of Massachusetts.
In this edition of IP Talk with Wolf Greenfield, Meaghan Luster discusses her first year working in patent litigation.
00:49 - Highlights from Meaghan’s first year at Wolf Greenfield
01:26 - The most rewarding and challenging aspects of patent litigation
02:18 - The advantages of working every day with top clients and new areas of technology and law
02:49 - Meaghan’s work spans a range of technologies from pharmaceuticals to medical devices to software
03:25 - Communicating with jury members that are often not technical people
05:18 - How time as a judicial law clerk prepared Meaghan for her current practice
06:19 - Meaghan’s involvement in diversity and inclusion initiatives
07:27 - How Wolf Greenfield’s commitment to diversity and inclusion is unique
John Harmon is a shareholder in both the Mechanical and Chemical & Materials Technologies Practices at Wolf Greenfield. He represents clients in industry and academia in a wide range of technologies related to the mechanical, materials, and chemistry fields. One area of particular interest these days is the evolving impact of artificial intelligence (AI) on intellectual property matters.
The United States Patent and Trademark Office (USPTO) recently issued its “Inventorship Guidance for AI-Assisted Inventions.” This guidance is pursuant to President Biden's Executive Order last fall on the “safe, secure, and trustworthy development and use of AI.”
In this edition of IP Talk with Wolf Greenfield, John Harmon offers perspective on these early days of AI application.
01:06 - A summary of the latest guidance from the USPTO
06:05 - An overview of the Thaler v. Vidal case
06:53 - What further action might be taken in the future to address the President's concerns?
09:01 - What constitutes an "invention" and how does AI muddy the waters?
11:59 - File earlier rather than later
12:52 - Simply applying AI to a problem doesn’t constitute patentable subject matter
14:29 - The issues that need to be considered when AI and robotics are used together
16:13 - Suggestions for moving forward with AI
Rob Sahr is a shareholder in Wolf Greenfield’s Biotechnology Practice. He develops strategies for life science companies to maximize exclusivity for therapeutic and diagnostic products. Rob has also assisted federal grant recipients and contractors with Bayh-Dole compliance.
Originally passed at the end of 1980, the Bayh–Dole Act permits ownership by contractors of inventions arising from federal government-funded research. In recent months, the Biden Administration has seemed intent on more aggressively exercising “march-in rights” under the Act to promote affordability of taxpayer-funded inventions.
In this edition of IP Talk with Wolf Greenfield, Rob provides insight on recent developments regarding Bayh-Dole compliance. Here are the highlights.
00:59 - On the contentiousness of Bayh-Dole
03:06 - What is a subject invention and why are they the source of so much confusion?
04:59 - Defining “march-in rights” and how are they different from “taking title”
06:16 - The four requirements of march-in rights
07:04 - Explaining “timely disclosure” and its importance
08:34 - Implications of the recent University of South Florida case
10:28 - Enforcing the requirements around utilization reports and how the Presidential election might factor into the equation
Scott McKeown is a shareholder in Wolf Greenfield’s Post-Grant Proceedings Practice. Based in the firm’s Washington, DC office, Scott focuses his practice on high-stakes matters before the US Patent Trial & Appeal Board, Court of Appeals for the Federal Circuit, and related patent litigation matters. Recognized as one of the top PTAB trial attorneys in the US, Scott is also a frequent speaker and author on various intellectual property topics and his award-winning blog can be followed at PatentsPostGrant.com.
In this edition of IP Talk with Wolf Greenfield, Scott offers his insight on some of the biggest PTAB developments over the past year and things to watch in 2024. Here are the highlights.
01:07 - Scott gives an overview of 2023 PTAB changes and explains how they have changed the practice
03:32 - PTAB developments that Scott is monitoring this year
05:41 - Scott offers some helpful tips for in-house counsel in light of the Federal Circuit’s In re Cellect ruling
07:31 - Exciting times ahead for Wolf Greenfield’s Washington, DC office
We’re pleased to feature May Rohrbach in this episode of Wolf Greenfield’s Alumni Spotlight series. May was previously a patent agent in Wolf Greenfield’s Electrical & Computer Technologies Practice. She was also part of the firm’s technology specialist intern program.
Now, May serves as a QA Engineer II at Blink, an Amazon Company. Blink delivers affordable, innovative, and easy-to-use smart home security devices.
Here are some highlights from May’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.
00:47 - An overview of May’s current responsibilities
01:45 - How May’s current position differs from being at a law firm
03:03 - May’s role at Wolf Greenfield prepared her for her current position at Blink
04:08 - Her favorite Wolf Greenfield memories
05:11 - May’s favorite book
05:57 - Dream destination
2024 is upon us and it’s going to be another busy year for intellectual property law. In this episode of IP Talk with Wolf Greenfield, you’ll hear Wolf Greenfield attorneys from a variety of practice areas offering their insights on what to expect in the months ahead. Here are some of the highlights.
01:06 - Jeff Hsi commented on the impact the Amgen v. Sanofi decision may have on the biotech and pharmaceutical industries in 2024.
01:59 - Jonathan Roses with thoughts on the In re Cellect case.
03:11 - Following the Columbia Sportswear case, Jen Wang discusses the importance of choosing a good title in a design patent application.
04:04 - John Harmon on artificial intelligence (AI) and the importance of filing patent applications in a timely manner.
04:57 - In the wake of the Supreme Court’s decision in the Jack Daniels case, John Strand’s thoughts on the line between free expression under the First Amendment and trademark law.
05:56 - John Welch previews the Vidal v. Elster trademark case to be decided by the Supreme Court in 2024.
06:43 - Scott McKeown on the Patent Trial and Appeal Board’s (PTAB) much anticipated updated rules package.
07:32 - Zach Piccolomini expects a great deal of focus on the new Unified Patent Court (UPC) and European unitary patent.
08:27 - Ed Russavage offers some thoughts on how President Biden’s Executive Order on Artificial Intelligence may impact IP, including some patent and copyright issues.
09:24 - With a number of cases challenging the drug pricing scheme in the Inflation Reduction Act, Dan Young comments on the possible implications for a company’s patent strategy.
10:11 - Rob Sahr on the Biden Administration’s Executive Order stating that “when new technologies and products are developed with support from the US Government, they will be manufactured in the United States whenever feasible and consistent with applicable law.”
11:32 - Libbie DiMarco says 2024 may see a rise in Section 337 non-patent claims before the ITC.
Libbie DiMarco is a shareholder at Wolf Greenfield and, along with Dan Young, co-chair of the firm's Washington, DC office. Libbie is an intellectual property litigator focusing her practice primarily on complex patent litigation in Federal District Court and before the US International Trade Commission (ITC).
In this episode of IP Talk with Wolf Greenfield, Libbie highlights the impressive growth already taking place in the DC office and looks ahead to 2024. Here are the highlights.
01:02 - The reasons that led to Wolf Greenfield opening a Washington, DC office
02:13 - Growth in the DC office has been impressive
03:42 - Co-chairing the office with Dan Young
04:41 - 2023 developments at the ITC
06:03 - Advice for navigating the latest changes at the ITC
06:52 - Best practices for indemnification
Bryan Conley is a shareholder and experienced litigator at Wolf Greenfield who focuses his practice on intellectual property matters at the agency, trial, and appellate levels. He regularly represents high profile technology clients at trial concerning their most challenging patent matters.
One area of intense interest lately has been Section 337 investigations. These investigations into unfair import practices are conducted by the US International Trade Commission and most often involve claims regarding intellectual property rights, including allegations of patent infringement and trademark infringement by imported goods.
In this episode of IP Talk with Wolf Greenfield, Bryan offers a detailed look at Section 337. Here are some of the highlights.
00:56 - Bryan provides an overview of Section 337 investigations
02:41 - Factors driving the increase in questions related to public interest
05:27 - Examples of public interest factors that the Commission considers
06:28 - The role of the Administrative Law Judge (ALJ)
07:38 - Bryan explains why the ITC is more willing to delegate public interest fact finding to the ALJ when standard essential patents (SEPs) are involved
08:52 - Why it’s critical for private parties to create a public interest record and what should be included in that record
10:32 - Recent impactful public interest Section 337 cases
12:39 - It’s important for respondents to act quickly to highlight the significance of public interest factors after a complaint is filed
13:57 - The top four statutory factors that are important when developing a public interest strategy and related arguments
15:23 - Bryan describes “tailoring”
16:31 - Final suggestions on preparing for and dealing with public interest Section 337 issues
We’re pleased to feature Eric Amundsen in this episode of Wolf Greenfield’s Alumni Spotlight series. Eric was previously a shareholder in Wolf Greenfield’s Mechanical Technologies Practice. He worked at the firm for over 22 years.
Today, Eric serves as a senior energy transition consultant at Geosyntec Consultants, where he focuses on energy transition, life cycle assessment, sustainability, and environmental policy. Eric assists organizations by addressing their energy transition and Environmental, Social, and Governance (ESG) goals. He helps identify, manage, and report on the opportunities and risks associated with the shift to a lower-carbon economy.
Here are some highlights from Eric’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.
00:46 - Eric describes his current responsibilities with Geosyntec
01:52 - Progress being made in decarbonization
02:56 - The joy of “figuring things out”
03:44 - Making the transition from attorney to energy transition consultant
04:14 - How Wolf Greenfield prepared Eric for his role at Geosyntec
05:04 - What sets Wolf Greenfield apart from other law firms
06:13 - Dream destinations
07:05 - Favorite get-away spots
Getting a new product to market is a time-consuming and difficult task that few achieve. Yet, the husband and wife team of Greg Besner and Leslie Hsu have done just that with their Sunflow brand of beach chairs and accessories. Greg is a serial entrepreneur and Leslie is a fashion designer. Their journey was filled with challenges, from idea conception through design to product launch - with a successful appearance on ABC’s Shark Tank along the way.
In this episode of IP Talk withWolf Greenfield, Greg and Leslie discuss their story with Neil Ferraro, chair of Wolf Greenfield’s Mechanical Technologies Practice, and Paul Metaxatos, co-founder and principal of Motiv, a Boston-based consultancy that designs products and develops brands for companies of all sizes. Here are a few of the highlights:
01:43 - Leslie explains where the idea for Sunflow originated
03:59 - Neil describes Greg and Leslie as problem solvers
05:21 - Paul explains Visual Brand Language (VBL) as an important product differentiator
06:20 - Greg on the features that make Sunflow unique
08:55 - Executing with excellence
09:53 - The importance of developers, designers, and patent attorneys working as a team to develop and protect ownable aspects of a new product
11:30 - Making practical decisions along the way to ensure the iconic new product
16:20 - Greg explains the value of having proper patent protection
19:19 - The Shark Tank experience
21:03 - What’s ahead for Sunflow?
25:19 - Paul believes Sunflow is taking a page from Tesla’s playbook
27:20 - Neil stresses the importance of making sure innovations in the pipeline are patented before disclosure or release
Jas Lee is a shareholder in Wolf Greenfield’s Chemical & Materials Technologies practice. She works with clients on IP strategy development and execution. Jas particularly enjoys helping start-up companies identify their most valuable IP and best strategies to protect them. Additionally, Jas serves as chair of Wolf Greenfield’s Diversity Committee. And if this isn’t all enough, Jas is a competitive tri-athlete.
In this episode of IP Talk withWolf Greenfield, Jas discusses her work at Wolf Greenfield and her training as a triathlete for Team USA. Here are a few of the highlights:
00:51 - Jas Lee’s current responsibilities and focus areas
02:05 - Jas loves working with start-ups
02:39 - Achievements of Wolf Greenfield’s diversity committee
03:54 - Getting involved in triathloning
06:38 - Jas was a member of Team USA for the 2023 World Triathlon Sprint & Relay World Championships in Germany
08:37 - Making the transition from weekend triathlete to competing with Team USA
09:36 - The competitions ahead
10:10 - Balancing training and competition schedules with work and family responsibilities
11:11 - How training helps clear the mind
Suresh Rav is an associate at Wolf Greenfield, focusing his practice on patent litigation.
Before joining Wolf Greenfield full time, Suresh was a summer associate at the firm in 2020.
Prior to law school, Suresh was a scientist at GMP Nutraceuticals, where he oversaw regulatory compliance for the manufacturing facility in accordance with FDA regulatory guidance.
In this episode of IP Talk withWolf Greenfield, Suresh discusses his time as a summer associate and his eventual return to Wolf Greenfield. Here are a few of the highlights:
00:47 - Suresh’s current responsibilities and focus areas
02:06 - The experience of being a summer associate at Wolf Greenfield in 2020, the “summer of COVID”
03:31 - Working and bonding with other summer associates
04:25 - How the summer associate program influenced Suresh’s decision to become an IP attorney
05:48 - Prior to working at Wolf Greenfield, Suresh worked as a scientist
08:32 - The factors that eventually brought Suresh back to Wolf Greenfield
09:40 - Some of the interesting projects and assignments that Suresh has worked on recently
10:41 - A few surprises along the way
11:32 - Suresh’s work with new summer associates
Scott McKeown recently joined Wolf Greenfield’s Washington, DC office as a shareholder
in the Post-Grant Proceedings Practice. Scott focuses his practice on high-stakes matters before the US Patent Trial & Appeal Board, Court of Appeals for the Federal Circuit, and related patent litigation matters. He is recognized as one of the top PTAB trial attorneys in the US, having handled more than 400 PTAB matters since 2012, including those in which more than $500 million was at stake.
In addition to his client work, Scott is a prolific blogger and publishes the award-winning PatentsPostGrant.com, where shares his insight on PTAB matters, patent litigation, patent reissues, patent reexamination, proposed litigation, patent policy issues, and patent prosecution tidbits. He also teaches the course on post-grant patent practice at George Washington Law School in Washington, DC.
Scott is also a frequent speaker and author on various intellectual property topics and has been recognized by leading legal publications, including Chambers USA, The Legal 500, Best Lawyers, IAM, and Managing IP.
In this edition of IP Talk with Wolf Greenfield, Scott shares his path from wanting to be a VCR repairman to becoming an attorney, details his practice, and explains what attracted him to Wolf Greenfield.
- 01:09 - What led Scott to focus on post-grant patent issues
- 03:48 - Details on Scott’s practice and what led to his success
- 06:14 - Scott’s non-linear path to the law
- 08:27 - The decision to join Wolf Greenfield
- 10:47 - What Scott’s looking forward to in his role
- 12:22 - What readers can expect from Scott’s blog
- 13:52 - Hot topics and news items Scott is following
We’re pleased to feature Justin Colannino in this episode of Wolf Greenfield’s Alumni Spotlight series. Justin was an associate in Wolf Greenfield’s Litigation Practice from 2014-2017. He also worked closely with the firm’s Electrical & Computer Technologies Practice.
Today, Justin serves as Assistant General Counsel for Open Source, Standards and Open ML at Microsoft. He runs a team that oversees legal processes to enable open source engagement at massive scale.
Here are some highlights from Justin’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.
00:51 - Justin’s current role at Microsoft
03:41 - Open source’s impact on artificial intelligence (AI) and machine learning (ML) 05:28 - These are the early days of AI and ML
06:06 - What it was like going from Wolf Greenfield to becoming an in-house counsel
08:45 - Solving legal problems, managing risk, and keeping a focus on what is in Microsoft’s best interest
09:35 - What Justin enjoys most about his current position
12:20 – What experiences at Wolf Greenfield prepared Justin for his current role at Microsoft
14:12 - Justin’s favorite Wolf Greenfield memory
15:08 - A book recommendation from Justin
16:55 - Justin’s favorite place to unwind
Aya Cieslak-Tochigi is an associate in Wolf Greenfield’s New York office. She focuses her practice on all aspects of trademark and copyright law and works closely with a range of clients, from start-up businesses to multinational corporations.
Aya has extensive experience representing various clients over the years in the apparel/footwear and luxury goods industries for trademark and copyright matters. Most recently, she was part of the Thom Browne trial team that successfully defended trademark infringement and dilution claims against Adidas.
In this episode of IP Talk with Wolf Greenfield, Aya discusses the international component to her practice and her legal work focused on the fashion and apparel industry. Here are some of the highlights:
00:48 - Aya’s work at Wolf Greenfield
02:28 - There’s a strong international aspect to Aya’s practice
03:21 - Some of the key differences in the US trial system and the way IP law works compared to other countries
05:14 - How Aya became so involved in fashion and apparel
06:51 - Key lessons learned during the Thom Browne trial
08:58 - An overview of the “Rogers test” and the role it played in the Hermès v. Rothschild case
13:03 - How digital fashion content may potentially impact trademark and copyright issues
15:23 - Aya’s work mentoring students at the Fashion Institute of Technology (FIT)
Jeffrey Hsi is a shareholder in Wolf Greenfield’s pharmaceutical practice. As a scientist, inventor, entrepreneur, and counselor, Jeff has experience from all of these perspectives. His law practice includes corporate counseling, formation and execution of intellectual property strategy, and patent prosecution and opinion work in a variety of areas.
Jeff previously served as Corporate Counsel at Amgen. Co-inventor on two US Patents and co-author of numerous scientific publications and presentations, Jeff is an invited speaker internationally on various IP issues and has lectured at the Harvard Extension School and MIT’s Sloan School of Management.
In addition to his practice at Wolf Greenfield, Jeff is a champion for social justice issues. He currently serves on the Board of Directors of Asian Americans Advancing Justice - AAJC in Washington, DC, where he serves on the Executive Committee and chairs the Policy and Programs Committee.
In this episode of IP Talk with Wolf Greenfield, Jeff talks about his legal career and his outside work on a variety of social justice issues. Here are some of the highlights:
01:38 - Jeff’s current role at Wolf Greenfield
03:28 - The impact of studying in Germany
04:46 - What drew Jeff toward a legal career
06:13 - The differences between being an in-house corporate counsel and working at a firm like Wolf Greenfield
07:51 - Jeff’s work with Asian Americans Advancing Justice - AAJC
12:25 - Some of the social justice issues Jeff is working on today
15:10 - Wolf Greenfield as a good community partner
We’re pleased to feature Renée Fuller in this episode of Wolf Greenfield’s Alumni Spotlight series. Renée started at Wolf Greenfield as a technology specialist in 2012 and left as an associate in 2019. She was part of the firm’s Chemical & Materials Technologies Practice.
Today, Renée serves as Senior Counsel at Bristol Myers Squibb. Bristol Myers Squibb is a global biopharmaceutical company whose mission is to discover, develop, and deliver innovative medicines that help patients prevail over serious diseases.
Here are some highlights from Renée’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.
00:51 - An overview of Renée’s current role at Bristol Myers Squibb
02:07 - Renée’s passion for innovation
03:02 - Making the transition from working at a law firm to becoming in-house counsel
04:26 - How Renée’s role at Wolf Greenfield prepared her for her current role
05:16 - What sets Wolf Greenfield apart from other law firms
06: 34 - What advice Renée would give to her 20-year-old self
07:13 - Renée’s dream destination for a leisure trip
Zachary Piccolomini is a shareholder in the Electrical & Computer Technologies Practice at Wolf Greenfield. He counsels clients in a wide variety of intellectual property matters, including patent and trademark portfolio development, IP due diligence, post-grant proceedings, IP litigation, and related issues.
Before joining Wolf Greenfield, Zach served as Counsel in the intellectual property group at an Am Law 50 law firm. He came to Wolf Greenfield as a lateral attorney in 2017.
In this episode of IP Talk with Wolf Greenfield, Zach discusses his move to Wolf Greenfield, the firm’s many strengths and gives an overview of important industry trends. Here are some of the highlights:
00:52 - Zach’s focus at Wolf Greenfield
01:50 - Factors that brought Zach to Wolf Greenfield
03:51 - Wolf Greenfield’s close and inclusive culture
04:54 - Professional and personal growth opportunities abound
06:20 - How Wolf Greenfield supports the practice of its attorneys
07:42 - What keeps Zach at Wolf Greenfield
08:56 - What Zach tells attorneys considering a career at Wolf Greenfield
10:24 - Hot 2023 topics include the potential impact of the EU’s Unified Patent Court, patentable subject matter, and protecting inventions utilizing artificial intelligence (AI).
12:01 - Gratitude for those that helped Zach in his legal career
Blaine Hackman focuses his Wolf Greenfield practice on post-grant proceedings before the US Patent and Trademark Office (USPTO), and related patent litigation, prosecution, and counseling. He regularly represents clients in inter partes review (IPR) and post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB), with an emphasis on biotechnology and pharmaceutical technologies.
In this episode of IP Talk with Wolf Greenfield, Blaine offers an overview of the firm’s post-grant practice. Here are some of the highlights:
00:49 - An overview of Wolf Greenfield’s post-grant practice.
03:12 - The difference between a jury trial and post-grant proceeding.
05:57 - For biotech and pharma companies, choosing the right path is a crucial choice.
07:51 - Changes for companies looking to claim newly discovered life science technologies or improvements to existing technologies.
08:55 - How to evaluate the likelihood of success prior to either a PTAB proceeding or jury trial.
11:04 - Recent changes to post-grant proceedings.
14:40 - The importance of expert testimony in PTAB proceedings and jury trials.
16:32 - Life sciences companies often miss opportunities by overlooking the PTAB.
18:50 - Implications for future legal proceedings after going the post-grant route.
20:10 - Wolf Greenfield’s expanding post-grant practice in 2023.
Wolf Greenfield believes it has a professional obligation to use its specialized training and legal skills to help ensure equal access to the justice system for all. Accordingly, the firm's extensive pro bono program extends far beyond representing clients in IP related cases. In recent years, Wolf Greenfield has successfully represented a range of clients, from immigration/asylum cases, to assisting sexual assault victims to aiding non-profit, charitable organizations with trademark disputes.
Chelsea Loughran is a shareholder at Wolf Greenfield. In addition to her work as a trial attorney and post-grant practitioner, she maintains an ongoing docket of pro bono cases and is deeply involved in Wolf Greenfield’s pro bono program.
In this episode of IP Talk with Wolf Greenfield, Chelsea provides an overview of the pro bono program and offers some examples of recent work. Here are some of the highlights:
00:44 – Overview of Wolf Greenfield’s pro bono program
02:41 – Why pro bono work is so meaningful
04:50 – Examples of Wolf Greenfield’s pro bono work
06:56 – Everyone at Wolf Greenfield is welcome to help out with pro bono cases
07:46 – The Wolf Greenfield Affinity Group
08:47 – The annual Associates Drive on behalf of Greater Boston Legal Services
10:45 – Wolf Greenfield’s relationships with outside organizations
12:44 – Pro bono work is a critical part of Wolf Greenfield’s culture
We’re pleased to feature Stephanie Stella in this episode of Wolf Greenfield’s Alumni Spotlight series. Stephanie was an associate in Wolf Greenfield’s Trademark & Copyright Practice from 2015-2019.
Stephanie now serves as Principal Corporate Trademark Counsel, Global Brand and Strategic Partnerships supporting the Xbox and Game Studios division of Microsoft. Microsoft is a global tech giant and the world’s second largest gaming company.
Here are some highlights from Stephanie Stella’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.
00:48 - Stephanie’s current responsibilities with Xbox and Microsoft
02:21 - The difference between a law firm attorney and working in-house for Microsoft
04:11 - How Wolf Greenfield prepared Stephanie for her current position
06:10 - The exceptional atmosphere and culture at Wolf Greenfield
07:43 - Advice Stephanie would give to her 20-year-old self
08:38 - Preferred travel destination
10:18 - Favorite TV show
Alexandra Kim is an associate at Wolf Greenfield, focusing her practice on patent litigation. She combines her legal skills with her deep scientific background to help Wolf Greenfield clients achieve their goals.
Before joining Wolf Greenfield full time, Alex was a summer associate at the firm. In this episode of IP Talk with Wolf Greenfield, Alex discusses her time as a summer associate, her work in public health, and her return to Wolf Greenfield.
Here are a few of the highlights:
00:42 – Alex’s current role at Wolf Greenfield
02:44 – Working at Wolf Greenfield as a summer associate
04:28 – The impact of the summer associate experience on Alex’s decision to pursue a career in law
05:36 – Alex’s lifelong interest in biomedical sciences and public health
06:50 – Working with other “happy nerds”
08:51 – Learning something new every day
09:47 – Starting at Wolf Greenfield in the midst of Covid
10:40 – The pleasure of mentoring new summer associates
John Strand is a shareholder in Wolf Greenfield’s Trademark & Copyright Practice. He focuses on the enforcement and defense of intellectual property rights in trademarks, trade dress, domain names, and patents.
In addition to his contested matter work, John has extensive experience in counseling clients to help avoid disputes and develop their IP protection, especially in the area of Web 3.0 and blockchain technologies, which includes cryptocurrencies and NFTs, non-fungible tokens. NFTs enable a buyer to purchase ownership of a digital good in the form of a unique digital token living on a blockchain.
In this episode of IP Talk with Wolf Greenfield, John will help us make sense of this new digital trend and offer suggestions on how owners can protect their IP rights. Here are a few of the highlights:
01:08 – Some background on NFTs and where they stand in relation to blockchain technologies
03:14 – IP issues related to NFTs
05:16 – The problem with protecting IP rights when the blockchain is involved
07:05 - IP protection suggestions for content creators to consider before publishing their work for sale
08:03 - Trey Songz sold an NFT album last year. Lessons for other artists considering this move
09:52 – After the initial hype about NFTs, what will the market look like?
We’re pleased to feature Cristin Berkey in this episode of Wolf Greenfield’s Alumni Spotlight series. Cristin was an associate at Wolf Greenfield from 2017-2019.
Cristin currently serves as Senior Director of Intellectual Property and Contracts at Abata Therapeutics. Abata translates the biology of regulatory T cells (Tregs) into transformational medicines for patients with progressive multiple sclerosis and other serious autoimmune and inflammatory diseases.
Here are some highlights from Cristin Berkey’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.
00:50 - Cristin’s responsibility for managing IP strategy at Abata Therapeutics
03:01 - An overview of T cells and their potential
04:53 - The difference between being an in-house attorney and working at a law firm
06:08 - Cristin’s favorite Wolf Greenfield memory
06:58 - Favorite place to get away
07:22 - Light, heartwarming shows are a nice way to relax
Patent owners face many challenges when it comes to protecting confidential information in today’s collaborative and interconnected world. In this episode of IP Talk with Wolf Greenfield, attorneys Brandon Blackwell and Jason Balich discuss some of the common challenges and mistakes, as well as offer helpful suggestions for planning and safeguarding secrets.
Brandon is a shareholder in the Chemicals & Materials Technologies Practice at Wolf Greenfield. He helps clients build and maintain patent portfolios and implement patent strategies that help them achieve their business goals. Brandon’s practice encompasses a range of areas - from patent prosecution and post-grant activities to IP transactions and portfolio management strategy.
Jason is a trial and appellate lawyer in Wolf Greenfield’s Litigation Practice. He protects clients’ technology and defends their freedom to use it. Jason’s experience includes successfully defending a variety of patent owners—from manufacturers to public universities. He also focuses his practice on trade secrets.
Here are some highlights from this episode:
01:05 – The speed and ubiquity of the Internet have fostered collaboration and innovation, but also increased risks
02:21 – Some of the most common mistakes made by patent owners
03:14 – Tips for preparing an effective protection plan
05:18 – Specifying what information can be shared
06:45 – An overview of non-disclosure agreements (NDAs)
11:19 – The importance of an expert IT team for sharing and protecting confidential information
12:20 – Suggestions for employee training
14:40 – The benefits of proper information protection and the consequences of not properly safeguarding information
Alex Ewing is featured in this first episode of Wolf Greenfield’s Alumni Spotlight series. Alex worked for Wolf Greenfield as an associate from 2011-2015. These days, Wolf Greenfield works for Alex, who is at LiquiGlide.
Alex serves as Chief Operating Officer at LiquiGlide, which was founded in 2012 and born out of an MIT Lab. LiquiGlide’s mission is to revolutionize products, packaging, processes, and patient experiences by eliminating the friction between solids and liquids.
Here are some highlights from Alex Ewing’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.
00:54 - Some background on LiquiGlide and its recent work with the consumer giant Colgate
01:53 - The difference between working at Wolf Greenfield and getting involved with a start-up
04:00 - What makes LiquiGlide unique in the marketplace?
05:19 - The thrill of doing it all at a start-up
06:26 - How Wolf Greenfield provided a solid foundation for his current work
07:48 - Alex’s favorite Wolf Greenfield experiences
08:24 - Advice to young people starting their professional lives
08:52 - Alex’s favorite book
Patent Agents are experts with advanced degrees and deep insights. Not all IP law firms have patent agents. But Wolf Greenfield has long recognized that having specialists who are not attorneys on the team adds to the firm’ richness - and provides an attractive career path for non-attorneys who love the world of IP law.
Elizabeth Boehm is a Patent Agent in Wolf Greenfield’s Biotech group. She assists the firm in biotechnology patent prosecution, and has extensive knowledge in the areas of biochemistry, molecular biology and biophysics.
In this episode of IP Talk with Wolf Greenfield, Elizabeth shares her thoughts on the life of a patent agent at Wolf Greenfield. Here are a few of the highlights:
01:12 - What attracted Elizabeth to the career of patent agent?
02:16 - A day in the life of a patent agent
03:54 - Wolf Greenfield as a leading firm for patent agents
05:12 - Feels liberating to be a patent agent
07:10 - Patent agents use their science degrees everyday
07:57 - Having a “seat at the table” in the biotech group
09:45 - What makes the patent world intriguing?
10:31 - Elizabeth's advice for STEM professionals considering a career as a patent agent
Keeping tabs on the International Trade Commission is critical for any business engaging in trade across the US border. And in recent months, there has been a great deal of news coming out of the ITC, from compelling cases to turnover of Administrative Law Judges.
In this episode of IP Talk with Wolf Greenfield, Attorney Libbie DiMarco shares her thoughts on the latest developments at the ITC. Here are a few of the highlights:
01:07 - Background at Wolf Greenfield
02:13 - ITC issues through the years
04:15 - The ITC had to make significant adjustments because of Covid
06:35 - The pros and cons of relying more on spoken testimony and less on written testimony
09:02 - The ITC recently appointed its third Administrative Law Judge in three years. What’s the impact of this kind of turnover?
11:03 - An overview of the Kyocera case and the implications of the Federal Circuit’s ruling against the ITC with a precedential decision for the Japanese electronics company.
Attorney Jonathan Roses is a shareholder in Wolf Greenfield’s Pharmaceutical Practice Group. He works with life sciences companies in a variety of areas, including small molecule pharmaceuticals, pharmaceutical formulations, medical devices and surgical methods.
In this episode of IP Talk with Wolf Greenfield, Jon provides insights on a variety of topics, including international patent prosecution, Section 101 reforms, Orange Book challenges and “skinny labels." Here are a few of the highlights:
00:41 - Jon’s love of chemistry
04:16 - Current challenges in patent procurement
06:01 - Strategies for protecting IP and how to minimize risk
07:52 - Key considerations for international patent prosecution
10:48 - Why have there been fewer challenges to Orange Book patents at the USPTO?
12:53 - Induced infringement trends - what’s happening with “skinny labels,” aka Section 8 carve-outs?
16:15 - An update on potential reforms for Section 101, the issue of patent eligible subject matter
19:14 - Will the Supreme Court take any challenges to patent eligible subject matter?
20:12 - How the increase in discretionary denials of post-grant proceedings impacts patent holders.
23:08 - Some thoughts on the success of Wolf Greenfield’s post-grant group
Many Wolf Greenfield attorneys were accomplished professionals in other fields before pursuing a career in IP law. A great number of them went through the firm’s technology specialist—or tech spec—program. A technology specialist translates into words the often complex work of inventors who are experts in their fields. At Wolf Greenfield, our technology specialists interact with clients frequently and are visible members of our client teams.
In this episode of IP Talk, Shareholder and Wolf Greenfield tech spec program alum Heather DiPietrantonio shares her experience and advice to those considering the program.
00:58 - What the tech spec program consists of
01:35 - Why someone might want to make the transition to IP law
02:42 - Heather discusses her journey from science to Wolf Greenfield
03:53 - The ideal qualities of a tech spec candidate
04:35 - Benefits of the tech spec program
05:23 - Heather addresses challenges of the program and how to overcome them
06:46 - Along with a wealth of knowledge, the tech spec program helps build relationships
07:22 - Advice to someone considering the tech spec program
Attorney Rob Maldonado is based in Wolf Greenfield’s New York City office. His practice is focused on intellectual property litigation, including patent, trademark, copyright, false advertising and unfair competition matters in federal court. But Rob is also passionate about issues related to diversity and inclusion.
In this episode of IP Talk with Wolf Greenfield, we talk to Rob about his decision to switch from an engineering career to law and his extensive involvement with groups like the Hispanic National Bar Association, the American Bar Association and the LGBT Law Association Foundation of Greater New York. Here are a few of the highlights:
01:05 - The transition from engineering to law
02:21 - Discussing the move to Wolf Greenfield
04:12 - Rob’s extensive work with diversity programs
06:35 - On his mother’s influence
08:24 - How diversity programs have evolved through the years
09:47 - There’s still a great deal of room for improvement
11:38 - The ABA’s “Good Guys” program seeks to involve men in the process of including women in positions of power
13:16 - Advice for young people considering a career in law
14:53 - Biggest wish for 2022
Matt Berg has been at the helm of Wolf Greenfield’s information technology initiatives since joining the firm in 2001. As Chief Information Officer, Matt is responsible for strategic technology planning and execution. At the top of his priority list is cybersecurity.
In this episode of IP Talk with Wolf Greenfield, Matt describes the firm’s approach to protecting client information and guarding against constantly evolving cyber threats. Here are a few of the highlights:
00:48 - The different approaches for working with existing clients compared to prospects
03:24 - Primary targets that must be protected
04:45 - How has the cybersecurity landscape changed in recent years?
07:13 - Policies for working with third parties
09:26 - The importance of ethical walls
11:55 - Explaining “the human factor” in cybersecurity
16:53 - Protecting against emerging and unknown threats
How far must the legal community as a whole—and intellectual property law, particularly—go to achieve ubiquitous diversity and inclusion? According to Wolf Greenfield shareholder Christina Licursi, quite a way. However, she’s encouraged by the changes she’s seen in the industry and in IP in recent months.
In this episode of IP Talk with Wolf Greenfield, Christina shared her thoughts on creating a more diverse legal workforce and areas where Wolf Greenfield is attempting to affect real change.
01:05 - Diverse hiring is a critical need in the legal industry.
03:13 - Christina shares strategies for recruiting and retaining diverse talent.
05:40 - Firms must address the return to the office with a balanced approach and improve diversity and inclusion efforts.
07:40 - Having diversity doesn’t necessarily mean an organization is being inclusive.
09:38 - Christina believes it’s everyone’s responsibility to hold their colleagues and organization accountable for creating a diverse and inclusive work environment.
11:29 - The pandemic has had a more significant impact on women.
12:35 - Christina shares her three-part approach to promote diversity and inclusion.
15:15 - On the difference between transactional leadership and transformative leadership.
17:08 - How to make good on promises of diversity and inclusion initiatives.
Career paths aren’t always a straight line, something Adam Zeiger can attest to. The Wolf Greenfield associate has a background in engineering and science, but a chance meeting led him toward the legal profession.
Without question, Adam’s story is not unusual—many have channeled their expertise in a wide variety of areas to pursue a career in IP law. In this episode of IP Talk with Wolf Greenfield, Adam explains why transitioning from science to law made sense and why he finds it so rewarding.
00:53 - Adam shares his career goals before going into IP law.
03:47 - There were skills that proved to be applicable in both science and law.
05:34 - Adam on areas of the legal industry that required a little more training in getting used to.
07:27 - What makes IP law so unique is the diverse occupational backgrounds many attorneys bring to the table.
08:47 - Adam talks about the benefits of working in IP.
In this episode of IP Talk with Wolf Greenfield, Neil Ferraro and Paul Metaxatos offer guidance for protecting an organization’s products and designs.
Neil chairs Wolf Greenfield’s Mechanical Technologies Group. He works with clients in all areas of intellectual property and represents organizations ranging from startups to large corporations in a wide-range of technologies. Neil joined the firm after serving as an intellectual property attorney with the Ford Motor Company.
Paul is co-founder and principal of Motiv, a Boston-based consultancy that designs products and develops brands for companies of all sizes. Paul is recognized within the retail consumer industry as one of the leading authorities in brand-focused product development, having been associated with many iconic brands, including Keurig, Culligan, and Vitamix.
- 01:11 - The first steps a startup should do with a new design
- 02:58 - Paul’s advice to put a non-disclosure agreement (NDA) in place
- 05:22 - What is the story behind the invention?
- 06:44 - Developing effective protection strategies
- 09:42 - The importance of doing consumer research
- 12:05 - The role of design patents
- 14:35 - Utility patents are also a powerful option
- 17:22 - From concept to off-tool, it’s often a long, difficult experience to create a beautiful product
- 18:54 - Startups must be open-minded
- 20:15 - Pick the right partners for the entrepreneurial journey
As a technology specialist, Dr. Andrew Pinkard brings a very impressive background to Wolf Greenfield. He earned a PhD in chemistry from Columbia University and uses that knowledge in assisting the firm with patent prosecution related to both chemistry and materials science. He’s also currently enrolled in the School of Law at Fordham University.
In addition to his professional endeavors, Andrew has a deep dedication to Diversity and Inclusion efforts to help raise awareness and create opportunities for women and minorities interested in the STEM and legal fields.
In this episode of IP Talk with Wolf Greenfield, Andrew shares insight into his background and offers thoughts on how the legal industry can promote greater inclusion.
- 01:03 - What Andrew’s role as a technology specialist entails
- 01:27 - How a background in chemistry offers context for his current position
- 02:30 - The ways in which the STEM and sciences fields can attract more diverse candidates
- 03:20 - On the pressure of being a “trailblazer” and what attracted Andrew to Wolf Greenfield
- 04:56 - Balancing the responsibilities of promoting diversity and inclusion, while focusing on a significant workload
- 05:59 - The challenges of attending law school during the pandemic
- 07:06 - With a remote workforce, it may be easier for law firms to incorporate diversity
John Welch is a trademark and copyright counsel at Wolf Greenfield. He has represented clients in scores of patent, trademark, copyright lawsuits across the country.
John specializes in cases before the Trademark Trial and Appeal Board (TTAB), and speaks and writes frequently regarding that tribunal. His blog, The TTABlog, is highly popular with the trademark community.
In this episode of IP Talk with Wolf Greenfield, John Welch provides a summary of the Board, takes a look at interesting trends and cases and offers a review of the recently enacted Trademark Modernization Act. Here are some of the highlights:
00:49 - An overview of the Trademark Trial and Appeal Board (TTAB)
02:22 - Why do parties go to the TTAB instead of federal court?
03:59 - Explaining the high affirmance rate for likelihood-of-confusion and mere descriptiveness cases
04:55 - TTAB trends in 2021
06:19 - Why has there been an increase in failure to function cases?
07:15 - Interesting cases on the horizon
09:32 - Notable elements of the Trademark Modernization Act of 2020 (“TMA”)
12:39 - John’s popular TTABlog - keeping tabs on the TTAB since 2004
Practicing law is challenging and time-consuming under the most ideal circumstances. So it goes without saying that the COVID-19 pandemic has required a new way of working to ensure clients are serviced to the fullest extent.
However, for many, juggling work and family demands—all within the same four walls—is an entirely new challenge. Chelsea Loughran, a shareholder in the litigation group at Wolf Greenfield, is a married mom with two young children, and like many of us, she’s navigated the new normal through trial and error. She recently shared her unique perspective on IP Talk with Wolf Greenfield.
- 01:00 - What Chelsea’s home and work life was like prior to March of last year
- 01:55 - There were a number of home and work-related discussions to prepare for a fully remote environment
- 04:47 - The challenge of being a work-from-home attorney and a parent
- 07:19 - One of the clearest challenges has been conducting virtual depositions
- 09:01 - How Chelsea has adapted to other work duties
- 11:08 - Chelsea shares a story about an unexpected visit during a webinar
- 13:51 - The takeaways and benefits she’s noticed over the last year