James is an experienced patent attorney and accomplished research scientist who advises life sciences companies and investors. He works collaboratively with clients to develop thoughtful intellectual property strategies, build strong patent portfolios, and navigate evolving patent landscapes. His approach focuses on identifying and protecting key innovations by understanding clients’ technology and business goals.
He leverages his deep expertise in biology, chemistry, and related disciplines, which includes Ph.D. and postdoctoral experience performing structural studies of vaccine antigens and antibodies at Harvard Medical School and the N.I.H. Vaccine Research Center. He is the first-named inventor on U.S. Patent No. 9,718,873 relating to anti-influenza HA antibodies; and he invented the first flow cytometry reagent to enable single-cell cloning of cross-reactive influenza HA-directed antibodies.
He holds an A.B. in Chemistry from Harvard College, a Ph.D. in Biology from the Massachusetts Institute of Technology, and a J.D. from The George Washington University Law School, where he was on Law Review and was a judicial intern to the Honorable Kathleen O’Malley of the US Court of Appeals for the Federal Circuit. His scientific research has been published in scientific journals, including Nature, Cell, Science Translational Medicine, and the Proceedings of the National Academy of Sciences USA.
Experience
- Represented a vaccine company in patent matters and in a $1.1 billion deal to be acquired by a major biopharmaceutical company
- Represented a lipid nanoparticle (LNP) company in preparation and prosecution of patent applications and patent due diligence
- Represented a lentiviral vector therapy company in patent matters through multiple rounds of venture-backed funding
- Represented a cell therapy company in patent matters through multiple rounds of venture-backed funding and negotiation of a collaboration agreement with a major biopharmaceutical company
- Represented AAV company in patent matters from Series A though $200M IPO
- Represented CAR T and NK cell company in patent matters, including patent due diligence of iPSC-based manufacturing process
- Represented various AAV companies in patent matters, including in due diligence for M&A
- Supported appeal of inter partes review decision to U.S. Court of Appeals for the Federal Circuit
- Supported pre-trial investigation and discovery for litigations under the Biologics Price Competition and Innovation Act and the Hatch-Waxman Act
- Represented investment banks in patent due diligence for capital markets transactions
viewpoints
Federal Circuit Puts the Onus on Patent Owners to Disclaim Patent Term or Face Double-Patenting
September 7, 2023 | Blog | By Peter Cuomo, Thomas Wintner, James Whittle, PhD
On August 28, 2023, the U.S. Court of Appeals for the Federal Circuit, in In re Cellect, Appeal No. 2022-1293, evaluated for the first time how statutorily authorized patent term adjustments interact with the judge-made doctrine of obviousness-type double patenting.
Picture Claims as an Effective Patent Strategy: Top 10 Reasons to Precisely Tailor Your Patent Claim
September 6, 2023 | Blog | By James Whittle, PhD, Terri Shieh-Newton, Dean Farmer, PhD
A “picture” claim refers to a patent claim precisely tailored to track a particular product’s important advantages and features. When drafting a patent application, one should describe various embodiments of the invention and include both picture claims, tailored to those embodiments, and broader claims, to encompass groups of embodiments.
Disqualifying an Inventor’s Prior Publication as Prior Art – Invoking §102(b)(1)(A)
July 6, 2023 | Blog | By James Whittle, PhD, Dean Farmer, PhD
An invention is not patentable if it was described in, or obvious in view of, an earlier printed publication. See 35 U.S.C. 102(a)(1). This blog post addresses how to overcome an anticipation or obviousness rejection where an inventor is the author or otherwise the source of subject matter in the publication cited as prior art
News & Press
Mintz Announces Record Member Growth in 2023
December 22, 2023
Mintz proudly announced the election of 13 attorneys to Members and the addition of a record-setting 22 new lateral Members in 2023, with 11 Partners in the newly opened Toronto office. This diverse group strengthens Mintz’s core areas, spanning Commercial and IP Litigation, Life Sciences, Tech, Private Equity, and Energy & Sustainability. The elevated Members and new lateral additions bring invaluable expertise to help clients navigate complex legal landscapes.
Cooley Life Sciences IP Team Departs to Mintz Boston Office
April 13, 2022
A team of two new Members and an Of Counsel with deep patenting capabilities and decades of experience supporting biotech and pharmaceutical clients enhances our already robust Life Sciences IP prosecution and strategy practice.
Publications
- Tailored Treatment, Tailored Enforcement: Protecting Innovation in Personalized Medicine from a Patent-Protection Loophole. 84 Geo. Wash. L. Rev. 480 (2016).
- Vaccine-Induced Antibodies that Neutralize Group 1 and Group 2 Influenza A Viruses. Cell 166(3):609-623 (2016).
- Flow cytometry reveals that H5N1 vaccination elicits cross-reactive stem-directed antibodies from multiple Ig heavy-chain lineages. J Virol. 88(8):4047-57 (2014).
- Self-assembling influenza nanoparticle vaccines elicit broadly neutralizing H1N1 antibodies. Nature 499(7456):102-6 (2013).
- Structural and genetic basis for development of broadly neutralizing influenza antibodies. Nature 489(7417):566-70 (2012).
- Elicitation of broadly neutralizing influenza antibodies in animals with previous influenza exposure. Sci Transl Med. 4(147):147ra114 (2012).
- Broadly neutralizing human antibody that recognizes the receptor-binding pocket of influenza virus hemagglutinin. PNAS 108, 14216-14221 (2011).
- Structure of the Sec13-Sec16 edge element, a template for assembly of the COPII vesicle coat. J Cell Biol 190, 347-61 (2010).
- Architectural nucleoporins Nup157/170 and Nup133 are structurally related and descend from a second ancestral element. J Biol Chem 284, 28442-52 (2009).
- Genome-wide mapping of DNase hypersensitive sites using massively parallel signature sequencing (MPSS). Genome Res. 16(1):123-31 (2006).
Recognition & Awards
Willard Waddington Gatchell Award
Order of the Coif
GW Law Review
National Science Foundation Graduate Research Fellowship
Involvement
- Member, American Bar Association
- Member, American Intellectual Property Law Association
- Member, Intellectual Property & Technology Law Advisory Council, The George Washington University Law School
Recent Insights
Mintz proudly announced the election of 13 attorneys to Members and the addition of a record-setting 22 new lateral Members in 2023, with 11 Partners in the newly opened Toronto office. This diverse group strengthens Mintz’s core areas, spanning Commercial and IP Litigation, Life Sciences, Tech, Private Equity, and Energy & Sustainability. The elevated Members and new lateral additions bring invaluable expertise to help clients navigate complex legal landscapes.
Federal Circuit Puts the Onus on Patent Owners to Disclaim Patent Term or Face Double-Patenting
September 7, 2023| Blog|
