Sterne Kessler Goldstein Fox
VideoPlay
Named 2013, 2014 "IP Star" by Managing Intellectual Property

2014 IP Stars Logo

 

 

 

Eldora L. Ellison, Ph.D.
 

Mind + Muscle

Eldora L. Ellison, Ph.D.

Director

 

Dr. Ellison is a Director in the Biotech/Chemical and Litigation Practice Groups. Over the course of her 20-year career, she has gained extensive experience in inter partes patent matters, building on a strong foundation in patent prosecution. Dr. Ellison’s experience includes representing clients in approximately 20 inter partes review proceedings, more than 15 patent interferences, and in various patent reexaminations and district court litigations.  Dr. Ellison's practice also includes evaluating patent portfolios, e.g., for due diligence analyses, invalidity, non-infringement, or freedom-to-operate; preparing and prosecuting patent applications; counseling clients on intellectual property strategy, including Hatch-Waxman issues; and resolving inventorship disputes. Dr. Ellison represents a variety of types of clients, including large multinational corporations, start-up companies, and not-for-profit organizations. Dr. Ellison has been recognized as a leading practitioner in the life sciences.  She has served as an expert witness on patent matters, Managing Intellectual Property magazine has named her an “IP Star,” and LMG Life Sciences has twice named her a “Life Sciences Star.” She has been quoted in publications such as IPLaw360 and The Washington Post for her analyses of developments in patent law.

Dr. Ellison is an editor of Patent Office Litigation, a two-volume set focused on the new contested proceedings under the America Invents Act, published in 2012 by Thomson Reuters Westlaw. This book examines how the proceedings interact with other aspects of patent procurement and enforcement, and it delivers practical analysis and advice.  

Dr. Ellison's intellectual property experience has been principally in technical areas such as biotechnology, pharmaceuticals, molecular biology, therapeutic methods, diagnostic assays, analytical instruments, immunology, virology, bacteriology and vaccines.  But she is also called upon to represent clients in other technical areas, given her specialized legal expertise.

She lectures and publishes frequently on topics such as the America Invents Act, patent interferences, patent reexaminations and concurrent patent litigation, and patents and licensing. And she serves on the faculty for the District of Columbia Bar's Continuing Legal Education Program.

Dr. Ellison is the Chairperson of the firm's Professional Development Committee, and she previously chaired the firm’s Diversity Committee. She also serves as a Member of the Board of Directors for Turning Point Academy Public Charter School in Maryland.

Publications and Speaking Engagements

  • "USPTO Post-Grant Patent Trials 2013 – Austin", Robert Greene Sterne and Eldora L. Ellison, Ph.D., April 2013
  • "IP: Lessons Learned From Contested Proceedings at the USPTO" InsideCounsel Magazine, Eldora L. Ellison, Ph.D., Deborah Sterling, Ph.D., January 2013.
  • "IP: Options for Contesting Patentability at the USPTO," InsideCounsel Magazine, Eldora L. Ellison, Ph.D., Deborah Sterling, Ph.D., November 2012.
  •  "Inter Partes Review – a Useful Tool for Overcoming Freedom-to-Operate Obstacles," BIOTechNOW, Eric K. Steffe, Eldora L. Ellison, Ph.D., Deborah Sterling, Ph.D., November 2012.
  • "Picking the Best Tools From Your Tool Box: Responding Strategically to Freedom to Operate Obstacles Under the AIA," BIO IPCC Pre-Conference Workshop, Eldora L. Ellison, Ph.D., Eric K. Steffe, November 2012.
  •  "Advantages Of Inter Partes Review In Hatch-Waxman Cases," Law360, Eldora L. Ellison, Ph.D., H. Keeto Sabharwal, Dennies Varughese, November 2012.
  • "America Invents Act: Derivation Proceedings," Sterne Kessler fact sheet, Eldora L. Ellison, Ph.D., Deborah Sterling, Ph.D., October 2012.
  • "Fundamentals of Patents and Licenses for Pharmaceutical and Biotech Products: The New Life Sciences Frontier," Faculty Member for the District of Columbia Bar CLE Course, July 2012.
  • "A New Framework: Challenging Patents in Changing Times," Life Sciences Intellectual Property Review, Eldora L. Ellison, Ph.D., Eric K. Steffe, June 2012.
  • "Patent Prosecution Strategies for Life Sciences Companies Under the AIA," Boomberg Law Reports - Intellectual Property, 3/7/12
  • "Bayh-Dole After Stanford v. Roche - Revising Research Agreements with Academic Institutions," ACI's 16th Advanced Forum on Life Sciences Collaborative Agreements and M&A, 2/28/12
    "Strategies for Challenging Patents in Pharma and BioPharma In the Wake of the In re NTP Decision," Bloomberg BNA's Pharmaceutical Law & Industry Report, 2/3/12
    "Impact of The America Invents Act on Patent Challenges at the USPTO," World Intellectual Property Review, 11/4/11
  • "America Invents Act: The 5 New Post-Issuance Procedures," The Sedona Conference, 10/13/11
  • "What You Need to Know About The America Invents Act of 2011," Sterne Kessler webinar, 10/12/11
  • "America Invents Act Panel," Eastern District Bench Bar Conference, 9/26/11
  • "Patent Litigation at the PTO Under the America Invents Act of 2011," BNA's Patent, Trademark & Copyright Journal, 9/23/11
  • "Post-Grant Review Under the America Invents Act of 2011," a podcast from Legal Talk Network of Suffolk University Law School, 9/16/11
  • "America Invents: Immediate Changes to Patent Law Start Today," IP Watchdog blog, 9/16/11
  • "Best Practices for Building IP and Conducting Due Diligence Investigations," FX Conferences webinar, 5/4/11
  • "Licensing and Intellectual Property Workshop," One Med Forum- San Francisco 2011, 1/11/11
  • "Patent Reform's Effects On Hatch-Waxman Litigants," Law360, 10/19/10
  • "Post-Grant Review: How Will It Affect Your (Client's) Business?", Bloomberg Law Reports, 08/02/10
  • "Challenging Patents Before the USPTO: Looking Ahead to a World of Patent Reexaminations, Post-Grant Reviews and Inter Partes Reviews," The National Law Review, 07/12/10
  • "Use of Interferences to Challenge Patents Before the USPTO," The National Law Review, 07/08/10
  • "Litigation or re-examination?" World Intellectual Property Review, Jan/Feb 2010
  • "Monetization of Intellectual Property," National Bar Association Corporate Counsel Conference, February 2010.
  • "No Data, No Patent? - establishing a credible utility for therapeutic method patents," published by Financier Worldwide in Strategies for Growth, Survival and Patent Protection, January 2010.
  • "Emerging Infectious Disease- What We Have Learned from the "Swine Flu" Outbreak" San Diego BioPharma Conference, 2009.
  • "Fundamentals of Patents and Licenses for Pharmaceutical and Biotech Products: The New Life Sciences Frontier," Faculty Member for the District of Columbia Bar CLE Course, March 2009.
  • "Best Practice,"  Life Sciences Intellectual Property Review, June 2008.
  • "Patent Litigation & Interferences," Guest Instructor, The National Institutes of Health, Technology Transfer Course, March 2008 & 2009.
  • "Fundamentals of Patents and Licenses for Pharmaceutical and Biotech Products: The New Life Sciences Frontier," Faculty Member for the District of Columbia Bar Continuing Legal Education Course, March 2008.
  • "Patent Reform Act of 2007.  Or 2008??  Or 2009??"  Georgetown University Law Center, Guest speaker to the Student Intellectual Property Law Association, February 2008.
  •  “U.S. Supreme Court Urges a Less Rigid Approach in Assessing the Obviousness of Inventions,” The Commercial Law Connection, National Bar Association, Summer 2007.
  • “Client Development for Women Lawyers – How to Get the Clients You Want and Build Your Book of Business,” Women’s Bar Association, District of Columbia, May 2007.
  • “Introduction to Patents & Licensing in the Life Sciences,” Instructor, District of Columbia Bar Association Continuing Legal Education Course, April 2007.
  • “Is Your Career on Track,” The Young Lawyer, American Bar Association, February 2007.
  • “Managing Your Intellectual Property in a Changing, Perhaps Flatter, World,” National Bar Association, Corporate Counsel Conference, February 2007.
  • “US Patent Reform – Will 2006 be Different than 2005?” The CIPA Journal, February 2006.
  • “Protecting Your Company’s Assets – Strategies for Positioning Your Product or Brand in the Marketplace – and Keeping it There!”  National Bar Association, Corporate Counsel Conference, February 2006.
  • “Patent Reform – Where is it Going and When Will it Get There?”  Women’s Bar Association of the District of Columbia, November 2005.
  • “Patent Act of 2005,” The Biojudiciary Project Open House at BIO Convention, June 2005.
  • "Natural Resources in Biotechnology," University of Baltimore School of Law, Intellectual Property Law Symposium, 2004.
  • "Patentability of Single Nucleotide Polymorphisms," IBC USA Symposium on Pharmacogenomics, SNPs & Genetic Patenting, 2000.
  • "Biotechnology: Patents, Licensing & FDA Practice," Patent Resources Group's Advanced Biotechnology Patent Law Course Textbook, 2000.
  • IBC USA Conference on Genetic Patenting - The State of the Law - The Effect on Science & Medicine - The Impact on Life; Speaker & Chairperson, 1999.
  • "Interaction of the Intron-encoded Mobility Endonuclease I-PpoI with its DNA Target Site, Molecular and Cellular Biology 13:7531-7539 (1993).
  • "Properties of the Intron-encoded Endonuclease I-PpoI," Invited Speaker, Promega Corporation, Madison, WI , 1993.
  • "Characterization of I-PpoI, an Intron-encoded Endonuclease that Mediates Homing of a Group I Intron in the Ribosomal DNA of Physarum Polycephalum," Molecular and Cellular Biology 10:3386-3396 (1990).
  •  
  • Admissions
      • District of Columbia

      • Maryland

      • United States Patent and Trademark Office

      • Court of Appeals for the Federal Circuit

      • United States District Court for the District of Columbia

  • Education
    • J.D., Georgetown University

    • Ph.D., Biochemistry, Molecular and Cell Biology, Cornell University

    • B.S., Biology, Haverford College