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Dorothy Whelan

Principal, Co-Chair | Twin Cities | 612-337-2509 | whelan@fr.com

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 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 currently a regular speaker at Fish’s Post-Grant for Practitioners webinar series. She spoke regularly at Fish’s Challenging Patent Validity in the USPTO 2012 webinar series and is a frequent panel member at industry seminars.

ADMISSIONS

  • Massachusetts 1987
  • United States Patent and Trademark Office 1989
  • Minnesota 1995
Memberships and Affiliations
  • Member, Boston College Law Review

OTHER DISTINCTIONS

Selected Speeches and Publications
  • “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).
  • Co-Host of Fish & Richardson's monthly Post-Grant for Practitioners Webinar Series, which takes place on the 2nd Wednesday of every month.
  • Co-Chaired Consero Group’s “Post-Grant Executive Roundtable” (September, 2014).
  • Authored "New Procedures for Challenging Patent Validity" chapter of "Inside the Minds: Recent Trends in Patent Infringement Lawsuits, 2014 ed.", published by Aspatore/Thomson Reuters (February, 2014).
  • “The America Invents Act: Do you need to rethink your strategy?” co-presenter, MNACCA Conference (June 14, 2012).
  • “Putting It All Together – Which Tools Are Right for You?” co-presenter, Challenging Patent Validity in the USPTO Webinar Series (May 8, 2012).
  • “Inter Partes Review Part III: Post-Trial,” co-presenter, Challenging Patent Validity in the USPTO Webinar Series (April 10, 2012).
  • “Inter Partes Review Part II: Trial,” co-presenter, Challenging Patent Validity in the USPTO Webinar Series (April 3, 2012, 2012).
  • “Inter Partes Review Part I: Pretrial,” co-presenter, Challenging Patent Validity in the USPTO Webinar Series (March 27, 2012).
  • “Strategies for Challenging Patent Validity after AIA,” co-presenter with Rick Anderson and Steven Carlson, Silicon Valley Life Sciences Series (December 7, 2012).
  • “New, Revised, and Now-Extinct Post-Issuance Proceedings,” co-presenter with Tim Bianchi, MIPLA forum (October 17, 2011).
  • “Strategic Use of Post-Grant Proceedings in Light of Patent Reform,” co-chair and panel member, Fish & Richardson Reexam Seminar (October 11, 2011).
  • “Duty of Disclosure in Reexamination Proceedings,” co-presenter, Fish & Richardson Monthly Webinar Series (November 10, 2010).
  • “Strategic Use of Reexamination” forum co-chair, panel member addressing “Strategic Options-Which One is Right for You?,” Texas Lawyer, Dallas (April 22, 2010).
  • “Strategic Use of Reexamination” forum co-chair, panel member addressing “Strategic Options-Which One is Right for You?,” Daily Journal, Silicon Valley (September 24, 2009).
  • ACI’s In-House Counsel Forum on Patent Reexamination, forum co-chair, panel moderator, and panel member, New York (May 28, 2009).
  • “Reexamining Reexamination,” co-presenter, Fish & Richardson’s 2009 LEAD retreat (March 18, 2009).
  • 2007 Twin Cities Medical Device Seminar, panel moderator for “Freedom to Operate: Assessing Business and Legal Risk and Clearing the Hurdles that Arise” (December 4, 2007).
  • “The Use of Secondary Considerations in Applying the §103 Nonobviousness Test,” 28 B.C.L.Rev. 357 (1987), reprinted in Intellectual Property Law Review (1989).
Awards and Honors
  • "IP Star" by Managing Intellectual Property (2013-2016)
  • “Top 250 Women in IP” by Managing Intellectual Property (2016).
  • "Top 250 Women in IP" by Euromoney (2013)
  • Recognized as "Leading Individual" in IAM Patent 1000 ranking for Counsel for Post-Grant Procedures
  • Recognized in “The World’s Leading Patent Practitioners″ by IAM Patent 1000 and recommended for post-grant procedures (2012-2013, 2016).
  • Named a “Top Patent Prosecutor” by Patent Research Review/Patent Buddy in 2011.
  • Minneapolis/St. Paul Business Journal: Women in Business/Industry Leader Award (2010)
  • The Best Lawyers in America- Intellectual Property (2013, 2011, 2008, 2007)
  • Super Lawyer (2012, 2011, 2010, 2009, 2008, 2007, 2006, 2003)
Education
  • BS, Yale University 1981
    Chemistry
  • SM, Massachusetts Institute of Technology 1984
    Polymers
  • JD, Boston College Law School 1987
    magna cum laude

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