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Jonathan Marcos Kaplan

Jonathan Marcos Kaplan

Practice areas:

Intellectual Property, Patent Application, Life Sciences & Biotechnology, Patent Infringement

About Me

 I am a Patent Attorney and Intellectual Property Counsel for life sciences, green technology, medical device and other (i.e. non-life sciences) technology clients.  I provide patent prosecution, portfolio management, opinions, due diligence, and litigation support as well as other services for in-house legal departments.


 


I served as in-house IP counsel for two companies and served many more in private practice. I know that the IP needs of my clients are more than just legal matters. IP plays a critical role in business models, business valuations, decision-making, and risk management. IP can define what products are brought to market, drive licensing opportunities, generate revenue streams, and provide leverage over competitors. 



Thus, I strive to be viewed by my clients as a business partner. I learn about my clients from both a technical and business perspective. I integrate their IP matters with their needs and business goals. I provide the kind of “big-picture” counseling that helps decision-makers meet those needs and goals. As a small firm practitioner, I provide efficient and cost-effective services.

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Practice Areas

Licensed since 2002

  1. Life Sciences & Biotechnology: 30%
    14 years
  2. Patent Application: 30%
    14 years
  3. Intellectual Property: 30%
    14 years
  4. Patent Infringement: 10%
    14 years

Payment

Fees:

Hourly ($400/hour), Fixed (Sometimes), Retainer (Always), Free Consultation (30 minutes)

Payment Types:

Cash, Check

Attorney Endorsements

3 total 

  • Robert Joseph Chambers II

    John is attentive, thorough, and incredibly knowledgeable about intellectual property issues. I would not hesitate to work with him again.

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    Robert Chambers Personal Injury Attorney
    Relationship: Worked together on matter

  • Craig McClellan

    John is a skilled and careful intellectual property attorney, and a team player. He is responsive, shows great initiative and is a pleasure to work with.

    More 

    Craig McClellan Personal Injury Attorney
    Relationship: Worked together on matter

Contact Info

Kaplan IP Law

PO Box 66744
Scotts Valley, CA, 95067

Resume

License

StateStatusAcquiredUpdated
CAActive200305/20/2015
NYCurrently registered 200203/13/2015

Professional Misconduct

We have not found any instances of professional misconduct for this lawyer.

Avvo Contributions

Legal Answers

Work Experience

TitleCompany NameDuration
PrincipalKaplan IP Law2011 - Present
Director of Intellectual PropertyGenencor2010 - 2011
Intellectual Property CounselMedarex, Inc.2007 - 2010
AssociateMorrison & Foerster2003 - 2007
AssociateFish & Neave2002 - 2003
Patent AgentFish & Neave1997 - 2002

Associations

Association NamePosition NameDuration
BayBioMember to Member Service Provider2011 - 2014
Intellectual Property Owners AssociationMember2010 - 2012
United States Patent and Trademark OfficePatent Attorney2002 - Present
United States Patent and Trademark OfficePatent Agent2000 - 2002

Legal Cases

Case NameOutcome
Biogen v. BerlexFavorable settlement after appeal to the Federal Circuit.
Housey v. AstraZeneca et al.Patents successfully found invalid and unenforceable.
Ecast v. TouchTunes and Rowe Int'lSettlement on the eve of trial

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Publications

Publication NameTitleDate
ExecSense, Inc.Evaluating a Company’s Patent Position, an ExecSense eBook,2012
Nature Biotechnology 20:945-947Flattmann and Kaplan, Licensing Research Tool Patents2002
Nature Biotechnology 19:683-684Flattmann and Kaplan, Patenting Expressed Sequence Tags and Single Nucleotide Polymorphisms (Part 1)2001
Nature Biotechnology 19:777-779Flattmann and Kaplan, Patenting Expressed Sequence Tags and Single Nucleotide Polymorphisms (Part 2)2001
Nucleic Acids Research 25:1108-1116Kaplan & Calame, The ZiN/POZ Domain of ZF5 is Required for Both Transcriptional Activation and Repression1997
Nucleic Acids Research 21:3767-3775Numoto et al., Transcriptional Repressor ZF5 Identifies a New Conserved Domain in Zinc Finger Proteins1993

Education

School NameMajorDegreeGraduated
Fordham University School of LawLawJD - Juris Doctor2001
Columbia UniversityMicrobiologyPhD - Doctorate1997
California Polytechnic State University, San Luis ObispoMicrobiologyundergraduate1991

Speaking Engagements

Conference NameTitleDate
Licensing Executives SocietyBiofuel Patent Strategies2013