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Ownership Transfer Analytics
Ownership transfer analytics can reveal a great deal of information about the strategic needs and perceptions of a company. This program will explain how to execute these analytics and the insight to be gained from them.
How to Maximize Protection: Patenting Inventions Including Chemical Features
Obtaining patent protection for inventions including chemical features has important differences from other subject matter. Learn how to maximize your chances of obtaining broad protection.
The Advanced Guide to Understanding the Unified Patent Court (UPC) and Unitary Patent (UP) Under the European Patent System
Later this year the Unified Patent Court (UPC) and Unitary Patent (UP) will come into effect, which will impact all users of the European patent system. This webinar will provide an overview of the new legal system and strategic considerations.

Schwegman Lundberg & Woessner

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Areas of Practice
  • Chemical & Materials Science
  • Clean Technologies
  • Life Sciences
IP Services
  • Freedom To Operate
  • Acquisition Due Diligence
  • Opinions
  • Patent Prosecution
  • Portfolio Management & Analysis
Overview
Education
Bar Admissions & Associations
Classes & Speaking Engagements
Representative Patents & Published Works
Overview
Overview

Warren Woessner is a registered patent attorney and a founding shareholder of Schwegman Lundberg & Woessner. His practice focuses on chemical patent law, including biotechnology, pharmaceuticals, vaccines, medical treatments, diagnostics, and biofuels and agricultural chemistry, including related opinion and licensing matters. In addition, Warren has served as an expert witness and also works in mediation of inventorship disputes and solutions for complex prosecution problems. Warren received his B.A. in chemistry (1966) from Cornell University, his Ph.D. (organic chemistry, 1971) and his law degree (J.D., cum laude, 1981) from the University of Wisconsin – Madison. From 1972-1978 he worked for Miles Laboratories in new drug research. Warren was an associate attorney at Kenyon & Kenyon from 1981-1984, and then joined Merchant & Gould in Minneapolis. He founded their chemical practice group and became a partner in 1989. Warren also co-founded the Biotechnology Committee of the Minnesota Intellectual Property Law Association. He has published and spoken widely on legal topics, was the 1993-1995 chair of the Chemical Practice Committee of the American Intellectual Property Law Association, chaired the Biotechnology Committee (2003-2005) and is currently a member of the Amicus Committee. He co-authored the AIPLA amicus briefs to the Federal Circuit and the Supreme Court in J.E.M. Ag Supply v. Pioneer HiBred. Warren is a Certified Licensing Professional – LES.

Warren also has a popular blog about IP bio law that can be found at www.patents4life.com.

Education
Education
University of Wisconsin
Madison, WI, 1981, J.D.
Honors: Cum Laude

Law Review: Wisconsin Law Review

University of Wisconsin
Madison, WI, 1971

Ph.D. Organic Chemistry

Cornell University
Ithaca, NY, 1966

B.A. Chemistry

Bar Admissions & Associations
Bar Admissions & Associations
Bar Admissions
Minnesota
New York
U.S. Court of Appeals Federal Circuit

U.S. Patent and Trademark Office

Associations

Fellow, American Intellectual Property Law Association, 2005 – Present

Amicus Committee, American Intellectual Property Law Association, 2005 – Present

Chair, Biotechnology Committee, American Intellectual Property Law Association, 2003 – 2005

Vice-Chair, Biotechnology Committee, American Intellectual Property Law Association, 2001 – 2003

Amicus Committee, American Intellectual Property Law Association, 1999 – 2002

Chair, Chemical Practice Committee, American Intellectual Property Law Association, 1993 – 1995

Chair, Professional Programs Sub, American Intellectual Property Law Association, 1999 – 2001

Member, Minnesota Intellectual Property Law Association, 1984 – Present

Chair, Biotechnology Law Committee, Minnesota Intellectual Property Law Association, 1986 – 1987

Co-founder, Biotechnology Committee, Minnesota Intellectual Property Law Association

ABA Representative, PTO Biotechnology Customer Partnership

Member, Biotechnology Committee, American Bar Association, 1993 – Present

Representative to PTO Biotechnology/Chemical/Pharmaceutical Customer Partnership, American Bar Association, 1997 – Present

Member, Board of Advisors, “Patent Strategy & Management” (American Lawyer Media Inc.), 2000 – Present

Board of Directors, MNBIO (Minnesota Biotechnology Association), 1999 – 2001

Board of Directors, Fund for Legal Aid Society, Minneapolis, 2001 – Present

Executive Committee, Fund for Legal Aid Society, Minneapolis, 2003 – Present

Certified Licensing Professional, Licensing Executive’s Society International, 2008 – Present

Classes & Speaking Engagements
Classes & Speaking Engagements
The Collaborative Convergence Series

Medtech, Minneapolis, MN, Moderator, “Biologics & Device” (March 2009)

Association of University Technology Managers (AUTM)

“You Can’t Patent That! Can You” and Judge, “A New and Exciting Game Show: Analyze that Contract” (Annual Meeting, Orlando, FL, Speaker, February 2009)

Licensing Executive Society

Moderator, “Managing the Gladiators – Surviving Patent Litigation” (Annual Meeting, Kissimee, FL, October 2008)

Association of University Technology Managers

Speaker, “Stem Cell Frontiers – Policy, Promise and Patents” (Eastern Regional Meeting, Boston, MA, July 2008)

BIO 2007 International Biotechnology Convention

Panelist, “Life After Merck KGaA v. Integra Life Science” (Boston, MA, May 2007)

American Conference Institute, 8th Advanced Forum on Biotech Patents

Speaker, “Applying and Avoiding the Doctrine of Inherent Anticipation” (Menlo Park, CA, April 2007)

C5’s 4th International FTO Forum

Speaker, “Claim Interpretation and Risk Evaluation – Construing Claims” (London, UK, March 2007)

American Conference Institute, 7th Advanced Forum on Biotech Patents

Speaker, “Applying and Avoiding the Doctrine of Inherent Anticipation” (Boston, MA, November 2006)

Practising Law Institute, Preparing Patent Legal Opinions
Speaker, “Patent Infringement and Freedom to Operate Opinions”

(New York, NY, September 2006)

American Conference Institute, Freedom to Operate

Speaker, “Assessing the Impact of the Doctrine of Equivalents on Claim Interpretation and Non-Infringement Opinions” (New York, NY, September 2006)

Association of University Technology Managers, Central Regional 

Speaker, “Patent Strategies for Stem Cell Technology” (Minneapolis, MN, July 2006)

Representative Patents & Published Works
Representative Patents & Published Works
Representative Patents

You can find a list of Warren’s representative patents here:  woessner-representative-issued-patents

Published Works

“Federal Circuit Applies Bilski Standard in Classen”, Patent Strategy & Management, March, 2009

“Ex Parte Kubin: Board of Patent Appeals and Interferences Applies Obvious To Try in Post-KSR Biotechnology Appeal”, Patent Strategy & Management, January, 2009

“Federal Circuit Split Decision on ‘Public Accessibility’ of Internet Posting”, Patent Strategy & Management, April, 2008

“Do-Over!’ – The Federal Circuit Takes a Second Look at Enzo”, J. Patent and Trademark Office Society, 85, 275, 2003

“”Let’s Get Physical” – Invited Open Peer Commentary on R. Eisenburg,” How Can You Patent Genes?””, AM.J. Bioethics, 2, 21, 2002

“Ruling Blunts Enzo’s Attack on Biotechnology”, Patent Strategy & Management, 3, 1, 2002

“The Evolution of Patents on Life–Transgenic Animals, Clones and Stem Cells”, J. Patent and Trademark Office Society, 83, 830, 2001

“New PTO Guidelines Raise Standards for Patenting Biological Materials”, Patent Strategy & Management, 11, April, 2001

“Supreme Court Should Confirm Patent Rights for Biotech Plants”, Legal Opinion Letter, Washington Legal Foundation, 11, No. 11, July 27, 2001

“The Evolution of Patents on Life–Transgenic Animals, Clones and Stem Cells”, J. Patent and Trademark Office Society, 83, 830, 2001

“Point of View – Guidelines for Patenting Biologicals”, Genetic Engineering, 20, 6, 2000