Jason M. Nolan, Ph.D.

practices in all areas of intellectual property law, including patent, trademark, copyright, and trade secrets. He represents clients in a variety of industries and technologies, including pharmaceuticals, displays (e.g., OLED), metalworking, food compositions, wound treatment compositions, driverless vehicles, and clothing. He has represented clients in intellectual property matters before the Federal district and appellate courts, as well as the Patent Trial and Appeal Board in the U.S. Patent and Trademark Office.

Dr. Nolan has secured numerous patents, both domestically and internationally, for clients in a variety of technical areas, including chemistry, material science, biotechnology, and mechanical engineering. He has performed freedom to operate and patent validity searches and analyses for clients in the pharmaceutical, automotive, printing, and medical device industries. He has also conducted intellectual property due diligence for clients as part of large transactions, such as mergers and acquisitions.

Dr. Nolan has helped clients prepare, file, and prosecute trademark and trade dress applications before the U.S. Patent and Trademark Office. He has also assisted clients enforce their trademarks and related rights.

Prior to entering private practice, Dr. Nolan was a primary patent examiner for the U.S. Patent and Trademark Office in the area of organic chemistry. Dr. Nolan also served as a law clerk in the USPTO’s Office of the Solicitor, Patent Trial and Appeal Board, and IP Attache Program.

Dr. Nolan is a 2012 graduate of The Catholic University of America, Columbus School of Law. He holds a Ph.D. in Chemistry from North Carolina State University and a B.S. in Chemistry from St. Lawrence University.

Experience

•Duane Morris LLP
- Associate, 2017-present
•Rothwell, Figg, Ernst & Manbeck P.C.
- Associate, 2013-2016
•United States Patent and Trademark Office
- Primary Patent Examiner, 2005-2013

Publications

Selected Publications

•Author, How the Government Defends PTAB Partial Institution Rule, Law360, November 16, 2017

•Author, Patenting Takeaways from Immersion v. HTC, Law360, March 12, 2015
•Author, After Dolly: The Status of Nonhuman Clones in Patent Law, Law360, January 16, 2014
•Author, The Role of Transformative Use: Revisiting the Fourth Circuit's Fair Use Opinions in Bouchat v. Baltimore Ravens, 16 VA. J.L. & TECH. 538, 2011
•Author, Formalism and Patent Claim Drafting: The Status of De Facto Independent Claims Under the Fourth Paragraph of 35 U.S.C. 112, 19 TEX. INTELL. PROP. L.J. 263, 2011
•Co-author, Regioselective Lithium-Halogen Exchange and Palladium-Catalyzed Cross-Coupling Reactions of 2,4-Dihaloquinolines, 46 TETRAHEDRON LETT. 6697, 2005
•Author, The Synthesis of (S)-Camptothecin and Clinically Useful Analogs, (August 19, 2003) (unpublished Ph.D. dissertation) (on file with D.H. Hill Library, North Carolina State University)
•Co-author, Regioselective Sonogashira Couplings of 2,4-Dibromoquinolines. A Correction, 68 J. ORG. CHEM. 3736, 2003
•Co-author, A Practical Six-Step Synthesis of (S)-Camptothecin, 3 ORG. LETT. 4255, 2001