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Jason Chumney

Jason Chumney

Patent Attorney

Jason Chumney is a patent attorney at Kim IP.  His practice is directed to patent preparation, prosecution and enforcement in the pharmaceutical, medical device, consumer product, mechanical and material science arts.  Jason has procured and strategically managed robust patent estates in a variety of subject matter areas, including small molecule pharmaceuticals for genetic disorders and skin care, delivery agents, injectable analgesic formulations, upstream and downstream petrochemical processing techniques and fragrance and flavor formulations.

Jason began his practice in New York at the renowned intellectual property boutique Darby & Darby P.C., and returns to his roots in joining Kim IP after practicing at national and international general practice firms in New York and New Jersey.  Jason also served a publicly held pharmaceutical company managing its branded patent prosecution portfolio and patent litigation matters and structuring, negotiating, and drafting commercial transactions.

Jason has experience handing the complex patent needs of large Fortune 100 clients and has handled such varied tasks as registering patents for FDA Orange Book listing, obtaining Patent Term Extensions for patents covering FDA-approved pharmaceutical products, arguing before the Board of Patent Appeals and Interferences in support of patent appeals, and managing intellectual property issues associated with mergers, acquisitions and divestitures.

In addition to serving large clients, Jason served as Counsel to the boutique SorinRand LLP where he specialized in serving the patent needs of startup and emerging ventures, in addition to supporting financing endeavors for relatively small publicly traded companies.

Jason also frequently authors articles and leads or participates in seminars of interest to entrepreneurs, business executives, and investors.  He joins Kim IP with a unique combination of experiences that position him well to serve our life science, chemical, technology-enabled clients of all sizes.

PUBLICATIONS & SPEAKING ENGAGEMENTS:
  • PLI Faculty – Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing
  • Speaker, NYU Entrepreneur’s Festival, New York City, 2013-2014
  • Co-author, “Patent Pool Participants Await Clarity Regarding Need to Make Separately Available Licenses to Competing Technologies,” IP Litigator, March/April 2010
  • Co-author, “The Risks of Failing to Properly Name Inventors on Patents,” Law Journal Newsletters, July 2009
  • Co-author, “No Room for Experiment: The Federal Circuit’s Narrow Construction of the Experimental Use Defense,” Nature Biotechnology 21, 453 (2003)
SERVICES:

Patent Procurement

Litigation (Patent and IP)

Opinion Work

Technology Licensing & Agreements

ADMISSIONS:

New York

U.S. Patent & Trademark Office

EDUCATION:

J.D., University of Houston

B.S. Chemical Engineering, Virginia Tech.