ATTORNEY PROFILE
Jason M. Nolan, Ph.D. practices in all areas of intellectual property law, including patent, trademark, copyright, and trade secrets. He represents clients in a variety of industries and technologies, including software, pharmaceuticals, displays (e.g., OLED), metalworking, food compositions, wound treatment compositions and medical devices, driverless vehicles, electric vehicles, tools, animal and pet products, and clothing. He has represented clients in intellectual property matters before the Federal district and appellate courts, as well as the Patent Trial and Appeal Board in the U.S. Patent and Trademark Office.
Patent Pending Isn't Good Enough™
Dr. Nolan has secured numerous patents, both domestically and internationally, for clients in a variety of technical areas, including chemistry, material science, biotechnology, and mechanical engineering. He has performed freedom to operate and patent validity searches and analyses for clients in the pharmaceutical, automotive, printing, and medical device industries. He has also conducted intellectual property due diligence for clients as part of large transactions, such as mergers and acquisitions.
Furthermore, Dr. Nolan helps clients file and prosecute their federal trademark, service mark, and trade dress registration applications before the U.S. Patent and Trademark Office, as well as their state trademark registrations in Florida. He also assists clients enforce their trademarks and related rights (e.g., preparing cease and desist letters; negotiating settlement agreements, litigation, etc.) as well as clients facing trademark enforcement.
Prior to entering private practice, Dr. Nolan was a Primary Patent Examiner for the U.S. Patent and Trademark Office in the area of organic chemistry, where he examined hundreds of issued patents. In addition, Dr. Nolan served as a United States delegate to the Fourth IP5 Examiners’ Workshop in Beijing, China in 2012. Dr. Nolan also served as a law clerk in the USPTO’s Office of the Solicitor, the Patent Trial and Appeal Board, and the IP Attaché Program.
Education
J.D. The Catholic University of America, Columbus School of Law
Ph.D. Chemistry, North Carolina State University
B.S. Chemistry, St. Lawrence University
Bar Admissions
Florida
Washington, D.C.
U.S. Patent & Trademark Office
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Southern District of Florida
U.S. District Court for the Middle District of Florida
Dr. Nolan is a 2012 graduate of The Catholic University of America, Columbus School of Law. While in law school, Dr. Nolan was a member of the Intellectual Property Student Law Association and published two law review articles in the area of intellectual property.
Dr. Nolan earned his doctorate in 2003 at North Carolina State University in the laboratory of Professor Daniel L. Comins. Highlights of Dr. Nolan’s research include the synthesis of S-camptothecin, a potent anti-cancer compound, and the development of methodologies for selectively functionalizing the C-2 and C-4 positions of quinoline. Dr. Nolan’s dissertation, in large-part, has been published in three peer-reviewed journal articles.
PUBLICATIONS
Jason M. Nolan, How the Gov’t Defends PTAB Partial Institution Rule, Law360 (Nov. 16, 2017)
Jason M. Nolan, Patenting Takeaways from Immersion v. HTC, Law360 (Mar. 12, 2015)
Jason M. Nolan, After Dolly: The Status of Nonhuman Clones in Patent Law, Law360 (Jan. 16, 2014)
Jason M. Nolan, The Role of Transformative Use: Revisiting the Fourth Circuit’s Fair Use Opinions in Bouchat v. Baltimore Ravens, 16 Va. J.L. & Tech. 538 (2011)
Jason M. Nolan, Formalism and Patent Claim Drafting: The Status of De Facto Independent Claims Under the Fourth Paragraph of 35 U.S.C. § 112, 19 Tex. Intell. Prop. L.J. 263 (2011)
Daniel L. Comins, Jason M. Nolan, and Ibrahim D. Bori, Regioselective Lithium-Halogen Exchange and Palladium-Catalyzed Cross-Coupling Reactions of 2,4-Dihaloquinolines, 46 Tetrahedron Lett. 6697 (2005)
Jason M. Nolan and Daniel L. Comins, Regioselective Sonogashira Couplings of 2,4-Dibromoquinolines. A Correction, 68 J. Org. Chem. 3736 (2003)
Daniel L. Comins and Jason M. Nolan, A Practical Six-Step Synthesis of (S)-Camptothecin, 3 Org. Lett. 4255 (2001)
