DANIEL (DAN) J. PEREIRA, Ph.D., a chemical biotech patent attorney, is a partner in the firm's Chemical Patent Prosecution group and an active member of the Patent Interferences group. His practice focuses on client counseling, portfolio management, patent prosecution, litigation and interferences involving a wide range of technologies. Dr. Pereira has particular expertise in the medical, biotechnology, and pharmaceutical fields.
Dr. Pereira has served as co-counsel on interferences cases, advising on issues ranging from strategies for avoiding interferences to strategies for provoking them. He has also acted as co-counsel in declared interferences. Dr. Pereira handles appeals before the Board of Patent Appeals and Interferences (BPAI), district court patent litigations, and Federal Circuit appeals, and has extensive experience providing pre-litigation and litigation avoidance counseling to clients. Additionally, Dr. Pereira assists both foreign and domestic clients of all sizes with licensing and contract negotiations, due diligence analyses and risk assessment in intellectual property asset acquisition transactions.
Prior to joining the firm, Dr. Pereira worked as a post-doctoral research scientist at the Mount Sinai School of Medicine where he conducted research in the fields of neurodegeneration and transgenic mouse models of human disease. While obtaining his degrees, he studied gene expression and gene therapy and performed research in the area of leukemia pathogenesis.
Resources
Publications
When Does Outside The Count?
Saturday, March 7, 2009
Blog
Motivation to Modify is a Cornerstone of Obviousness and Absent that the Board Reverses Obviousness Rejection
Friday, April 13, 2012
Ex parte Jones et al (Appeal 2010-011287, Serial no. 11/082,103) turned on obviousness of a claim directed to a method of creating a specialized alloy. There was a gap in the prior art relative to a limitation of applying two different particles to an alloy where one of he particles alters the alloy differently than the...
Board Reverses Examiner Who Failed to Provide Evidence to Support the Obviousness Rejection
Friday, March 23, 2012
In Ex parte HENRY et al (Appeal 2011-006558; Application 10/558,753) the Board was presented the question of whether the Examiner adequately supported the rejection based on evidence. The invention in Henry was a process for the manufacture of an aluminum plated strip comprising at least two plating layers of two...
Board Affirms Obviousness of Overlapping Ranges
Friday, March 02, 2012
In Ex parte Bouzekri (Appeal 2010-005203), the BPAI affirmed the examiner's finding of obviousness and reiterated some important points which often arise in patenting:
· overlapping ranges are prima facie obvious;
· preferable ranges are not dispositive of non-obviousness (e.g., do not necessarily provide a "...
Board Reverses Examiner Rejections Because "Substantially" Is Descriptive Of A Known And Common Technique In The Art And The Examiner Failed To Establish A Factual Basis In Rendering An Obviousness Rejection
Friday, February 24, 2012
In Ex parte Evans et al. (Appeal 2011-004119; Application serial no.
Federal Circuit Affirms Anticipation Based On A Prior Art Genus And A Lack Of Criticality For The Claimed Subgenus
Thursday, February 23, 2012
On February 17, 2012, the Federal Circuit issued a precedential ruling in Clearvalue, Inc. v Pearl River Polymers, Inc (2011-1078) that was an appeal from a jury verdict in an infringement suit in the District Court involving U.S. patent no. 6,120,690. While there were several issues, the issue of this article focuses on is the...
The Inventors' Definition Of A Claim Term In The Specification Controls The Interpretation Of That Term In Assessing The Relevant Scope And Content Of The Prior Art
Tuesday, January 17, 2012
In ex parte Theobald et al (Appeal 2011-011509; Application serial no.
Ex parte Perc
Thursday, July 14, 2011
The claims in Perc (Appeal No. 2011-003119, Application No.
Ex parte Uchida
Monday, July 11, 2011
In Ex parte Uchida (Appeal 2011-000486 of Appl. Serial No. 11/731,595), the questions before the board were (1) the broadest reasonable interpretation of the claimed range of "about 0.01 ?m to about 40 ?m" and whether that overlapped with a range of "between about 50 and about 1000 ?m" in the prior art and (2) whether the Declaration...
Ex parte Latorse
Friday, July 01, 2011
In Ex parte Latorse (Appeal 2011-003703; U.S.
Ex parte Thomsen
Friday, June 17, 2011
This was a win and the critical issue was whether the Examiner met the required burden to establish that a functional limitation was inherent in the cited prior art because " [i]nherency. . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient...
Ex parte Viviano
Friday, June 17, 2011
An apparent win falls short when the Board decides that your claims are nonetheless unpatentable for reasons that differ from the reasons that the Examiner originally rejected the claims. In ex parte Viviano (Appeal 2010-001424; decided June 15, 2011), the Board initially held that the Examiner failed to meet the required burden of...
Ex Parte Tsukamoto
Friday, June 03, 2011
Ex Parte Tsukamoto (Appeal 2010-007294) decided on June 2, 2011 is a case where the Board reversed the Examiner's obviousness rejections for the simple fact that the Examiner's rejections were based on conjecture, not supported by evidence nor proper reasoning.
In re Kao
Thursday, May 26, 2011
In re Kao, ___ F.3d ___ (Fed. Cir. 2011) (Appeal 2010-1307 from BPAI decision in U.S. Application Serial No. 11/680,432; Appeal 2010-1308 in Serial No. 12/167,859; and Appeal 2010-1309 in Serial No. 11/766,740), pertains to a group of three appealed cases from the BPAI following the BPAI's affirmations of the Examiners' conclusions of...
Ex parte Brusilow
Wednesday, May 18, 2011
In Ex parte Brusilow (Appeal 2011-001751 in U.S. Application No. 10/758,415) the Board of Patent Appeals and Interferences (BPAI) reversed the Examiner's finding of obviousness because the references relied upon "taught away" from their combination.
Ex parte Grado
Thursday, May 12, 2011
In a rather unusual manner, the Board of Patent Appeals and Interferences (BPAI) in Ex parte Grado (Appeal No. 2010-005832 in U.S. application serial no. 10/801,951), issued an order in an ex parte appeal requiring the Appellants to brief issues on restriction practice and Markush when restriction is not at issue, rather an...