Joseph DiDonato

Mr. DiDonato joined WOH in September of 2025 as Of Counsel. Mr. DiDonato practices principally in the area of intellectual property law, focusing on technology evaluation, (domestic and foreign) protection and commercialization of technologies. Mr. DiDonato represents public and private companies, universities and entrepreneurs before the Unites States Patent and Trademark Office, and in Federal and State Courts. For more than 25 years, he has advised clients to establish efficient patent, trademark and copyright strategy based on commercial viability and cost concerns, implementing procedures and processes for the effective and efficient management, evaluation and commercialization of intellectual property. Experienced in negotiation and drafting research and commercialization contracts, procedure manuals and other intellectual property related documents, Mr. DiDonato has also; and worked with employers to ensure compliance with federal funding requirements.

Representative Accomplishments

• Advised clients regarding processes of the management of intellectual property, designing and implementing procedures to efficiently and effectively evaluate and commercialize technologies, focusing in the areas of EV (Battery chemistry and design) Battery Power Train, Battery Manufacture (dry process, slurry process), Stem Cells (therapeutics and assays), Pharmaceuticals (large molecule, delivery/transport methods), Mechanical Engineering Chemistry, Polymer Chemistry, Organic Chemistry, Perfluoro Polymers, Artificial Intelligence (AI) and Medical Devices.

• Supervised and coordinated intellectual property staff of major multi-national chemical companies and universities for efficient organization, evaluation and use of IP portfolio. Supervised (foreign and domestic) patent prosecution and patent litigation by outside counsel for technologies Prepared and prosecuted (foreign and domestic) patent applications.

• Successfully resolved trademark disputes for major US energy companies; prepared litigation documents and briefs; resolved trademark counterfeiting import issues from in collaboration with INTA. Prepared and prosecuted (foreign and domestic trademark applications; supervised foreign associates. Resolved issues regarding copyright disputes and derivate work issues; negotiated and implemented agreements for licensing and ownership of copyright works.

• Continually monitoring the U.S. Senate Committee on Artificial Intelligence (AI) to appreciate potential legislation, and the USPTO regarding guidance, on the definition of AI as it applies to patent laws for preparation and prosecution, validity and commercialization of AI based technologies.

• Negotiated and prepared agreements regarding intellectual property matters for commercial collaborations, manufacturing and licensing agreements for strategic relationships; licenses, options, CDAs, MTAs and related agreements. , coordinated FDA approval process for technologies and implemented compliance protocols for FDA, Bayh-Dole and Hatch-Waxman Acts.

• Conducted and prepared review of multi-national companies for acquisition of target companies, evaluated IP for validity, commercial viability, “freedom o operate” (FTO) issues, competitive intelligence and valuation of target company IP, for viability of collaboration of IP using “Market Share” analysis theory. Established market valuation of technologies for agreements (including “start-up” companies) and created product development and commercialization strategies for IP portfolios and early-stage technologies appreciating “freedom to operate” (FTO) for commercial viability, costs and market scope.

Affiliations

Mr. DiDonato is admitted to practice in New York, New Jersey, and before the U.S. Patent and Trademark Office. He is a member of the New York State Bar Association, New Jersey State Bar Association, Associated University Technology Managers (AUTM), American Intellectual Property Law Association (AIPLA) and the Licensing Executive Society (LES).

Publications

Mr. DiDonato has provided guidance and instruction regarding the topics in science and intellectual property issues:

Davis, R.H., DiDonato, J.J., Hartman, G.M., Haas, R.C.: Mannose-6-Phosphate: Anti-inflammatory and Wound Healing Activity of a Growth Substance in Aloe Vera. Journal of the Podiatric Medical Association, 84:3, 1994.

Davis, R.H., DiDonato, J.J., Johnson, R.W. Stewart, C.B.: Aloe Vera, Hydrocortisone, and Sterol Influence on Wound Tensile Strength and Anti-Inflammation. Journal of the Podiatric Medical Association, 84:12, 1994.

Aloe Vera: A Scientific Approach (Preface); Vintage Press, New York, NY 10001 (1997).

“Evaluation, Prosecution and Commercialization Issues of Foreign and Domestic Intellectual Property,” NJ Bar Association IP Division, and internally to corporate employers Chemours Chemical Company, Rutgers University and Blank Rome LLP.

“AMGEN V. Sanofi (Review of Supreme Court Decision),” internal presentation at Chemours Chemical Company (Spring 2023)

Background/Education

Mr. DiDonato earned is Juris Doctor from the University of New Hampshire (Franklin Pierce) School of Law with a concentration in Intellectual Property. He received both his Bachelor of Arts and Bachelor of Science degrees from Loyola University Maryland and attended University of Pennsylvania to pursue graduate coursework in Molecular Biology.