Deborah L. Lu, Ph.D.

DL
  • Partner at Duane Morris LLP (804 Attorneys)
  • 1540 Broadway, 14th Floor, New York, NY 10036
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Biography

Deborah L. Lu, Ph.D. practices in the area of intellectual property law with a focus on preparation and prosecution of patent applications. Dr. Lu obtains and evaluates intellectual property protection, manages complex patent portfolios and counsels clients regarding validity, freedom-to-operate and patentability in biotechnology and pharmaceuticals. She is involved in both ex parte and inter partes reexaminations and interferences, and also negotiates transactions involving intellectual property issues such as licenses and agreements.

Dr. Lu is a 2004 graduate of Fordham University School of Law. She earned Ph.D. and M.S. degrees in Biological Chemistry from the University of Michigan and a B.S. in Biological Sciences with a concentration in Biochemistry from Cornell University.

Experience

•Duane Morris LLP
- Partner, 2018-present

•Vedder Price P.C.
- Shareholder, 2010-2018

•Frommer Lawrence & Haug LLP
- Associate, 2005-2010

Publications

Selected Publications

•Co-author, “US patent law and the attorney-client privilege,” Pharmaceutical Patent Analyst 2013 2(1), 1-3.

•Co-author, “How To Manage Collaborative Inventions,” Inside, 2012 30(2), 39-42.

•Co-author, “Is Mayo v. Prometheus the End of Diagnostic Patents?” Bloomberg BNA Life Sciences Law & Industry Report 2012 6(16), 845.

•Co-author, “Are laboratory notebooks necessary in a first inventor to file world?” J Commer Biotechnol. 2012 18(3), 67-68.

•Co-author,”US patent reform 2011: a few things to remember, Pharmaceutical Patent Analyst 2012 1(2), 121-123.

•Co-author, “Post-grant review: The good, the bad and the ugly for biotechnology companies,” J Commer Biotechnol. 2012 18(1), 97-99.

•Co-author, “Judicial Activism: A Biotech Patent Perspective,” Bloomberg Law Reports: Intellectual Property 2011 5(41):35-38.

•Co-author, “Intellectual property issues for veterinary pharmaceuticals in the USA,” Future Med. Chem 2011 3(7):847-850.

•Co-author, “Commentary regarding decision in Bilski from a biotech perspective,” J Commer Biotechnol. 2010 16(4), 360-361.

•Co-author, “Commentary regarding decision in Myriad Genetics on ‘isolated” DNA claims,” J Commer Biotechnol. 2010 Apr 27;advance online publication.

•Co-author, “Patent prosecution of biotechnology and pharmaceutical patents in a changing legal landscape,” Future Med. Chem. 2010 Jan;2(1):7-9.

•Co-author, “Patentability issues surrounding antivirals,” Nat Biotechnol. 2007 Dec;25(12):1403-4.

•Co-author, “The patentability of antibodies in the United States,” Nat Biotechnol. 2005 Sep;23(9):1079-80.

•Author, Post-transcriptional regulation of luteinizing hormone/human chorionic gonadotropin receptor expression, Ph.D. thesis, 1996

•Co-author, “3' untranslated region-mediated regulation of luteinizing hormone/human chorionic gonadotropin receptor expression,” Biochemistry, 1996 Sep 24;35(38):12347-53.

•Co-author, “Molecular cloning of a novel luteinizing-hormone/human-chorionic-gonadotropinreceptor cDNA. Identification of a long 3' untranslated region and cDNA sequence of the major transcript in rat ovary,” Eur J Biochem. 1994 Jun 15;222(3):753-60.

•Co-author, “Loss of lutropin/human choriogonadotropin receptor messenger ribonucleic acid during ligand-induced down-regulation occurs post transcriptionally,” Endocrinology, 1993 Jan;132(1):235-40.

Speaking Engagements

Selected Speaking Engagements

•Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2018: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 11-12, 2018

•Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2018: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 13-15, 2018

•Speaker, “Updates from the U.S.,” Chartered Institute of Patent Attorneys (CIPA)’s 2018 East of England Meeting, Cambridge, UK, March 15, 2018

•Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2017: Claim Drafting & Amendment Writing, Practising Law Institute,, New York, July 25-26, 2017

•Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2017: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 14-16, 2017

•Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2016: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 14-15, 2016

•Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2016: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 15-17, 2016

•Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2015: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 16-17, 2015

•Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2015: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 15-17, 2015

•Speaker, “Focus on Antibodies: Understanding Current 112 Standards for Written Description,” Advanced Forum on Life Sciences Patents, American Conference Institute, New York, January 13-14, 2015

•Speaker, “Workshop: Combating Gender Stereotypes in the Life Sciences Legal Community: Open Forum and Working Group on Overcoming Implicit Bias,” Women Leaders in Life Sciences Law, American Conference Institute, Boston, July 28-29, 2014

•Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2014: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 17-18, 2014

•Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2014: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 11-13, 2014

•Speaker, “35 U.S.C. 103 and the Court of Appeals for the Federal Circuit (CAFC),” Prior Art and Obviousness 2014: Current Trends in Sections 102 and 103, Practising Law Institute, New York, May 8, 2014

•Speaker, “Protecting Intellectual Property Rights by Enforcing Patent Rights Abroad and Understanding the Impact of Judicial Determinations by Foreign Courts,” Advanced Forum on Managed Patent Litigation, American Conference Institute, New York, December 10-11, 2013

•Speaker, “Exploring the Decision in the Bowman v. Monsanto Case. Global Patenting Strategy and Practice,” Crops & Chemicals USA 2013: Plant Biotechnology, Raleigh, North Carolina, August 7-8, 2013

•Speaker, “Managing Unique Challenges and Investigating Emerging Trends in Foreign Patent Litigation,” Global Patenting Strategy and Practice, American Conference Institute, New York, July 15-16, 2013

•Speaker, “Working Group Session: Assessing the Impact of New PTO Procedures under the AIA on Paragraph IV Litigation,” Paragraph IV Disputes, American Conference Institute, New York, May 7-8, 2013

•Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2012: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 19-20, 2012

•Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2012: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 13-16, 2012

•Speaker, “Working Group Session: Assessing the Impact of New PTO Procedures under the AIA on Paragraph IV Litigation,” Paragraph IV Disputes, American Conference Institute, New York, April 24-25, 2012

•Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 15-17, 2011

•Speaker, “Using A-Delays, B-Delays and C-Delays to Your Advantage,” The Life Sciences Lawyer’s Guide to Patent Term Adjustment and Patent Term Extensions, American Conference Institute, New York, January 26-27, 2011

•Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2010: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 16-18, 2010

•Speaker, “Patent Prosecution,” Fundamentals of Patent Prosecution 2008: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 18-20, 2008

•Speaker, “Perfecting Claim Drafting and Prosecution in Life Sciences Patent Applications,” Pharma/Biotech Patent Claim Drafting & Prosecution, American Conference Institute, New York, February 27, 2008

•Speaker, “Life Sciences Patents: What is Patentable?” Pharma/Biotech Patent Boot Camp Basic Training in Core IP and Related Regulatory Competencies for the Life Science Industries, American Conference Institute, San Francisco, September 18-19, 2007

•Speaker, “The Win-Win Collaborative Agreement: Ethical and Practical Negotiating and Drafting Strategies,” Structuring, Negotiating and Managing Win-Win Pharma and Biotech Collaborative Agreements, American Conference Institute, San Francisco, July 16-18, 2007

•Speaker, “Life Sciences Patents: What is Patentable?” Pharma/Biotech Patent Boot Camp Basic Training in Core IP and Related Regulatory Competencies for the Life Science Industries, American Conference Institute, New York, June 21-22, 2007

•Speaker, “Key Agencies Overview: Understanding the Jurisdiction and Interplay of the FDA and PTO in the Patenting of Drugs and Biologics,” Pharma/Biotech Patent Boot Camp Basic Training in Core IP and Related Regulatory Competencies for the Life Science Industries, American Conference Institute, New York, June 21-22, 2007

Areas of Practice (2)

  • Intellectual Property
  • Patent Preparation and Prosecution

Education & Credentials

Contact Information:
212 692 1026  Phone
212 202 4678  Fax
www.duanemorris.com/attorneys/deborahlu.html
University Attended:
University of Michigan, Ph.D., Biological Chemistry, 1996; University of Michigan, M.S., Biological Chemistry, 1992; Cornell University, B.S., Biological Sciences, 1990
Law School Attended:
Fordham University School of Law, J.D., 2004
Year of First Admission:
2005
Admission:
New York; U.S. Patent and Trademark Office; U.S. District Court for the Southern District of New York; U.S. District Court for the Eastern District of New York; U.S. Court of Appeals for the Federal Circuit
Memberships:

Professional Activities

Future Medicinal Chemistry
- Peer Reviewer

•Faculty, Practising Law Institute

•Faculty, American Conference Institute

•New York Intellectual Property Law Association

Pharmaceutical Patent Analyst
- Member, Editorial Board

BNA Life Sciences Law & Industry Report
- Member, Editorial Advisory Board

•Polytechnic Institute of NYU
- Adjunct Professor, 2013-2015

•Protein Sciences Corporation Advisory Board, 2012-2017

Bloomberg BNA Life Sciences Law & Industry Report (LSLR)
- Editorial Advisory Board, 2011-present

Pharmaceutical Patent Analyst
- Editorial Board, 2011-present

Future Medicinal Chemistry
- Peer Reviewer, 2010-present

•Practising Law Institute
- Faculty, 2008-present

•American Conference Institute
- Faculty, 2007-present

Birth Information:
Ann Arbor, Michigan, September 7, 1968
ISLN:
917962859

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New York, New York

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