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 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. In previous years, Ms. Whelan spoke regularly at Fish’s Challenging Patent Validity in the USPTO webinar series.
Education
J.D., Boston College Law School 1987
Member, Boston College Law Review
magna cum laude
S.M., Massachusetts Institute of Technology 1984
Polymers
B.S., Yale University 1981
Chemistry
Admissions
- U.S. Patent and Trademark Office 1989
- Massachusetts 1987
- Minnesota 1995
Publications
- “IPR and PGR: A Complex and Shifting Landscape,” Managing Intellectual Property (July 29, 2019)
- “Recent Developments in Biopharma PTAB Practice,” NYIPLA (February/March 2017)
- “Post-Grant Pushes Forward in Life Sciences,” Metropolitan Corporate Counsel (September 17, 2015)
- Validity Challenges: District Court Vs. Patent Office, Law360 (December 18, 2013)
Media Mentions
- 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)
- Quoted, “Reviewing ‘A Tremendous Year of Change’ for the PTAB,” Managing Intellectual Property, (January 22, 2019)
- Quoted, “The Unintended Consequences of IPR,” Life Sciences Intellectual Property Review (June 16, 2015)
Speaking Engagements
- “Post-Grant for Practitioners Webinar | After Arthrex: What the Supreme Court’s Decision Means,” Fish Post-Grant Webinar (June 23, 2021)
- “Post-Grant: 2020 Year in Review,” Fish Post-Grant Webinar (January 14, 2021)
- “Post-Grant: 2019 Year in Review,” Fish Post-Grant Webinar (January 8, 2020)
- “SAS and Oil States: One Year Later,” Fish Webinar (May 8, 2019)
- “Hatch-Waxman and IPR Strategy,” Fish Webinar (March 27, 2019)
- “2018 Post-Grant Year in Review,” Fish Webinar (January 9, 2019)
- “BioPharma Patents at the PTAB,” Fish Webinar (July 11, 2018)
- “Looking Ahead: Practical Implications of Oil States Energy Services and SAS Institute,” Fish Webinar (April 26, 2018)
- “2017 Post-Grant Year in Review,” Fish Webinar (January 10, 2018)
- “Ethical Issues at the PTAB,” Fish Webinar (May 10, 2017)
- “2016 Post-Grant Year in Review,” Fish Webinar (January 11, 2017)
- “Midyear Review of Decisions and Developments at the PTAB,” Fish Webinar (July 13, 2016)
- “Biosimilars & IPR,” Fish Webinar (March 24, 2016)
- “2015 Post-Grant Year in Review,” Fish Webinar (January 13, 2016)
- “Hot Issues in PTAB Trials,” AIPLA/USPTO Road Show Series – Enhancing Patent Quality and Conducting AIA Trials at the USPTO, San Jose, CA (August 24, 2015) and Alexandria, VA (August 28, 2015)
- “Making Sense of Inter Partes Review Proceedings,” Cantor Fitzgerald’s Inaugural Healthcare Conference (July 8, 2015)
- “Hatch-Waxman and Biosimilars: A Total Immersion Course Encompassing Strategies for Prosecution, FDA Regulation, Post-Grant Challenge, Litigation and Appeal,” Patent Resources Group Advanced Patent Law Course (April 16-18, 2015)
- “Post-Grant Patent Challenges: What Bio-Pharma Practitioners Need to Know,” Boston Breakfast Series (October, 2014)
- “Post-Grant Executive Roundtable” Consero Group (September, 2014).
- “PTAB AIA Trial Roundtable,” 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),” Thomson Reuters Patent Disputes 2013, 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 proceedings or gain an advanced understanding of the post-grant landscape.
Recognitions
- Named a “Leading Patent Professional” and recommended for post-grant proceedings by IAM Patent 1000 (2012-2013, 2016-2021)
- Recognized as a notable practitioner in Intellectual Property, Chambers USA: Minnesota (2020-2021)
- Named a “Life Science Star” by LMG Life Sciences (2017-2020)
- Named to the “Top 50 Women in PTAB Trials” by the PTAB Bar Association (2019)
- Named a “IP Star” by Managing Intellectual Property (2013-2020)
- Named “Post Grant Proceedings Attorney of the Year” by LMG Life Sciences (2018)
- Named “Attorney of the Year” by Minnesota Lawyer (2017-2018)
- Named to the “Top 250 Women in IP” by Managing Intellectual Property (2016-2020)
- Named “Life Sciences MVP of the year” by Law360 (2017)
- Named to 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)
- Named to the “Top 250 Women in IP” by Euromoney (2013)
- Named a “Top Patent Prosecutor” by Patent Research Review/Patent Buddy (2011)
- Received “Women in Business/Industry Leader Award” Minneapolis/St. Paul Business Journal (2010)
- Named a Super Lawyer (2003, 2006-2013)
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