Kent H. Cheng, Ph.D.
Partner
Partner
Areas of Expertise
Patent Litigation, including litigation under the Hatch-Waxman Act
U.S. International Trade Commission
Counseling on Patent Validity, Infringement, and Freedom to Operate
U.S. Patent Office Practice and Patent Prosecution
Professional Summary
Dr. Cheng has practiced intellectual property law since 1988. He has extensive experience prosecuting and litigating patents covering pharmaceuticals under the Hatch-Waxman Act. He has advised branded pharmaceutical companies in preserving their competitive positions, and U.S. and foreign generic pharmaceutical companies to assist their entry into the U.S. market.
He also has prepared opinions on patent validity, infringement, and freedom to operate issues in the chemical, pharmaceutical, biotechnology, medical devices, electronic, software and mechanical arts.
In the arena of pharmaceutical and biotechnology patent prosecution, Dr. Cheng has represented clients in administrative proceedings in the U.S. Patent and Trademark Office including reexaminations, interferences and appeals to the Board of Patent Appeals and Interferences. He frequently lectures on U.S. patent law and practice in the U.S., Europe and Asia.
Dr. Cheng has conducted audits of clients' system of procuring, maintaining and using patents; advised clients regarding confidentiality, licensing and employment/consultant agreements; and drafted settlement agreements and licensing agreements among multinational companies in various technologies. He also has advised clients in trademark and trade dress disputes, and in the area of unfair competition.
Education
J.D., Pace University, 1991
Ph.D., Chemistry, Brandeis University, 1979
B.A., Chemical Physics, Columbia University, 1974
Admissions
New York, Connecticut
U.S. Patent and Trademark Office
U.S. District Courts, Southern and Eastern Districts of New York; District of Columbia
U.S. Court of Appeals for the Federal Circuit
Memberships
New York State Bar Association
New York Intellectual Property Law Association
American Bar Association
Languages
Chinese
Articles
“Supreme Court debates critical component,” by Shanaz Mahmud, Reporter, Managing Intellectual Property with Kent Cheng, Partner
Lectures
“Drafting a Patent Application that Can Withstand Litigation,” Beijing, China
Decisions
In re '639 Patent Litigation 154 F. Supp. 2d 157 (D. Mass. 2001), aff''d sub. nom. SmithKline Beecham Corp. v. Copley Pharm., No. 01-1611, 45 Fed. Appx. 915 (Fed. Cir. Aug. 15, 2002).
Dr. Cheng has practiced intellectual property law since 1988. He has extensive experience prosecuting and litigating patents covering pharmaceuticals under the Hatch-Waxman Act. He has advised branded pharmaceutical companies in preserving their competitive positions, and U.S. and foreign generic pharmaceutical companies to assist their entry into the U.S. market.
He also has prepared opinions on patent validity, infringement, and freedom to operate issues in the chemical, pharmaceutical, biotechnology, medical devices, electronic, software and mechanical arts.
In the arena of pharmaceutical and biotechnology patent prosecution, Dr. Cheng has represented clients in administrative proceedings in the U.S. Patent and Trademark Office including reexaminations, interferences and appeals to the Board of Patent Appeals and Interferences. He frequently lectures on U.S. patent law and practice in the U.S., Europe and Asia.
Dr. Cheng has conducted audits of clients' system of procuring, maintaining and using patents; advised clients regarding confidentiality, licensing and employment/consultant agreements; and drafted settlement agreements and licensing agreements among multinational companies in various technologies. He also has advised clients in trademark and trade dress disputes, and in the area of unfair competition.
Education
J.D., Pace University, 1991
Ph.D., Chemistry, Brandeis University, 1979
B.A., Chemical Physics, Columbia University, 1974
Admissions
New York, Connecticut
U.S. Patent and Trademark Office
U.S. District Courts, Southern and Eastern Districts of New York; District of Columbia
U.S. Court of Appeals for the Federal Circuit
Memberships
New York State Bar Association
New York Intellectual Property Law Association
American Bar Association
Languages
Chinese
Articles
“Supreme Court debates critical component,” by Shanaz Mahmud, Reporter, Managing Intellectual Property with Kent Cheng, Partner
Lectures
“Drafting a Patent Application that Can Withstand Litigation,” Beijing, China
Decisions
In re '639 Patent Litigation 154 F. Supp. 2d 157 (D. Mass. 2001), aff''d sub. nom. SmithKline Beecham Corp. v. Copley Pharm., No. 01-1611, 45 Fed. Appx. 915 (Fed. Cir. Aug. 15, 2002).
