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Dennis Parad



Dennis Parad is an Associate at DLA Piper LLP.  Dennis is a Registered Patent Attorney and a former USPTO Primary Patent Examiner with experience advising clients on patent portfolio development & strategy in the biotech, chemical, healthcare, and pharmaceutical sectors.

Dennis advises clients with respect to preparation and prosecution of both U.S. and foreign/PCT patent applications, conducting IP portfolio evaluations, drafting validity and freedom-to-operate opinions, and intellectual property commercialization.

Dennis also represents clients in corporate transactions, including IP due diligence and reviewing and drafting legal agreements. A number of Dennis’ clients also engage him to represent their company as their outside general counsel.

Dennis’ intellectual property law experience covers a wide range of biotechnology and chemical practice areas in the chemical and biotechnology industries, including pharmaceutical compounds/formulations, medical devices/implants, antibodies, gene therapy, treatments in the fields of oncology, neurology, osteology, and dermatology, metallic medicine, cosmetics, detergents, textiles, polymers, nanostructures/nanomaterials, surgical methods, surfactants, lipids/liposomes/vesicles, dental compositions/devices, electrochemical devices, materials science, diagnostics, pesticides, immunology, optics, and tissue/biomedical engineering.

Dennis leverages his biochemical, legal, and business background to help entrepreneurs, start-ups, small and large corporations, universities, and research institutions develop, protect, and commercialize their intellectual property portfolios.

Recent Articles by Dennis Parad

After Final Consideration Pilot 2.0: A Patent Examiner’s Perspective

When the After Final Consideration Pilot Program 2.0 (“AFCP 2.0”) first launched in May of 2013, the program was lauded by both patent practitioners and USPTO officials as an effective tool to reduce pendency by advancing prosecution while reducing the number of Requests for Continued Examination (RCE’s). Since then, the USPTO has renewed the program multiple times and is still active. Essentially, the program provides another bite of the apple for the applicant by giving some time for the patent examiner to consider additional claim amendments after prosecution has closed without charging the applicant any additional fees. However, many patent practitioners today are finding little value in the program. Is AFCP 2.0 beneficial for advancing prosecution without filing an RCE? As a former primary examiner with ten years at the USPTO, I have a unique insight into the program and how it should be properly utilized.

Tips From a Former Examiner: Pre-Appeal Brief Review

After two or more U.S. Patent and Trademark Office (USPTO) office actions on the merits, a patent applicant has the option to appeal the patent examiner’s decision rejecting one or more claims to a higher forum, i.e., the Patent Trial and Appeal Board (PTAB). Since 2005, the USPTO has provided an ongoing pilot program in which an appellant, upon the filing of a notice of appeal, may also request a pre-appeal brief review. Why make this request? What are the pros and cons? What are the risks? In this article, I will explore these issues from my perspective as a former USPTO patent examiner.