Ranked in 1 Practice Areas
S

Senior Statespeople

Intellectual Property: Patent Prosecution

District of Columbia

15 Years Ranked

About

Provided by Jorge Goldstein

USA

Practice Areas

Goldstein has four decades of experience in the preparation and prosecution of patent applications before the U.S. and foreign patent offices in scientific areas such as genomics, molecular and cell biology, recombinant DNA technology, immunology, transgenics, therapeutic methods, stem cells, pharmaceuticals, and more recently BioFETs.

He established the firm's IP and Human Rights Pro Bono Practice, which integrates IP law with economic, social, and cultural rights to empower disenfranchised communities.

Goldstein has handled multiple and varied interferences over many years, including successful appeals to the Court of Appeals for the Federal Circuit. He has been involved in inter partes reviews at the USPTO, as well as European oppositions, and arbitrations in District Court and in Appellate litigation both as counsel and expert witness, and in counseling clients on intellectual property strategy, trade secrets, licensing, research contracts, university-industry relations, federal licensing, due diligence, acquisitions and employment agreements.

Career

Jorge A. Goldstein, Ph.D. is a founder of the firm and a director in Sterne Kessler’s Biotechnology & Chemical Practice Group. He is considered by his peers and clients to be one of the country’s pioneers in biotechnology patent law. Among his many awards, in 2017, Jorge was inducted into LMG Life Sciences Hall of Fame. He wrote the book U.S. Biotechnology Patent Law, first published in 2016, with a seventh, updated edition published in 2022. The book guides readers to understanding case law dealing with patents in biotechnology. He has almost forty-five years’ experience in the preparation and prosecution of patent applications before the U.S. and foreign patent offices in scientific areas such as genomics, molecular and cell biology, recombinant DNA technology, immunology, transgenics, therapeutic methods, stem cells, pharmaceuticals and BioFETs (biological field effect transistors).

He has handled multiple and varied interferences over many years, including successful appeals to the Court of Appeals for the Federal Circuit. He has also been involved in inter partes reviews at the USPTO, as well as European oppositions, and arbitrations in District Court, and in Appellate litigation both as counsel and expert witness. He has counseled clients on intellectual property strategy, trade secrets, licensing, research contracts, university-industry relations, federal licensing, due diligence, acquisitions, and employment agreements. He was lead counsel in the 1988 appellate case of In re Wands et al. 8 USPQ2d 1400 (Fed. Cir.), a pivotal decision on biotechnology enablement requirements. In addition, Jorge founded the firm's IP and Human Rights Pro Bono Practice, which was recognized as the winner of the 2015 Financial Times' Most Innovative North American Lawyers award in the "Innovation in a Social Responsibility Project" category.

Starting in 2012, Jorge was Visiting Professor of Law at the Universidad Austral in Buenos Aires, Argentina, where for several years he taught biotech patent law in the then only WIPO-certified regional master's IP program in Latin America.

Professional Memberships

American Association for the Advancement of Science; American Chemical Society; American Intellectual Property Law Association Biotechnology Committee; Biotechnology Industry Association

Publications

Goldstein is a prolific speaker, author, and thought leader on several life sciences intellectual property issues. Visit his biography on the Sterne Kessler website to view his thought leadership content.

Chambers Review

Provided by Chambers

USA

Intellectual Property: Patent Prosecution - District of Columbia
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Senior Statespeople

Jorge Goldstein offers substantial expertise in the biotechnology sector. He is highly experienced in the preparation and procurement of complex patents.

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District of Columbia

Intellectual Property: Patent Prosecution

Jorge Goldstein
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Jorge Goldstein
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Senior Statespeople
Robert Sterne
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Senior Statespeople
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Band 2

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Band 3