Brandon A. Chan, Ph.D.
Associate
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Phone: +1 212 471 1868
- Duane Morris LLP
1540 Broadway
New York, NY 10036-4086
USA - Duane Morris LLP
230 Park Avenue, Suite 1130
New York, NY 10169-0079
USA
Brandon A. Chan is a patent attorney at New York office of Duane Morris LLP and represents clients in all aspects of intellectual property law. Dr. Chan prepares and prosecutes patent applications in technologies ranging from biotechnology and chemistry to pharmaceuticals and design. In addition, he counsels clients regarding freedom-to-operate, invalidity, and non-infringement. Further, he assists clients in obtaining trademark protection and in protecting their intellectual property rights against allegations of infringement.
In 2009, Dr. Chan received his B.S. in chemistry from the University of Michigan and in 2016, he received his Ph.D. in chemistry from Louisiana State University. Prior to attending law school, he participated in academic research focusing on the synthesis and characterization of biopolymers. He is a co-author on a number of peer-reviewed publications and a co-inventor on U.S. Patent No. 10,519,278 drawn to methods of polymerizing polypeptides.
While in law school, Dr. Chan served as Senior Managing Editor of the Michigan State Law Review as well as participated in the International Patent Drafting Competition. In 2019, he received his J.D. from Michigan State University College of Law and joined Duane Morris in September of that year.
Dr. Chan is admitted to practice law in New York and New Jersey and is admitted to practice before the United States Patent and Trademark Office.
Admissions
- New York
- New Jersey
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Eastern District of New York
- U.S. Court of Appeals for the Federal Circuit
- U.S. Patent and Trademark Office (USPTO)
Education
- Michigan State University College of Law, J.D., magna cum laude, 2019
- Senior Managing Editor, Michigan State Law Review - Louisiana State University, Ph.D., 2016
- University of Michigan, B.S., Chemistry, 2009
Experience
- Duane Morris LLP
- Associate, 2019-present
Civic and Charitable Activities
- Judge, Thomas Tang Moot Court Competition, 2022 and 2023
- Volunteer Judge, Texas Young Lawyers Association National Trial Competition, 2022
Professional Activities
- Editorial Review Board for the Food and Drug Law Journal Vol. 77, Issue 4, 2022
Selected Publications
- Co-author, "Patent Primogeniture: First-Filed, First-Issued and Later-Expiring Patent in a Family Immune from a Finding of Obviousness-Type Double Patenting," Duane Morris Alert, August 19, 2024
- Co-author, "Pitfalls in Current Terminal Disclaimer Practice and Additional Problems for Patentees and Stakeholders in Proposed Changes," Duane Morris Alert, June 10, 2024
- Co-author, "No Inequitable Conduct in Certifying Unintentional Abandonment of Patent Application Despite Counsel's Knowledge of Abandonment," Duane Morris Alert, March 11, 2024
- Acknowledged Contributor, Eighth Edition of Mechanics of Patent Claim Drafting, Practising Law Institute, 2023
- Co-author, "Defending Against Obviousness-Type Double Patenting Using Safe Harbor Provision Remains a Viable Strategy for Preservation of Earned Patent Term Adjustment," Duane Morris Alert, December 20, 2023
- Co-author, "Patent Term Adjustment and Patent Term Extension Analyzed Differently in Consideration of Obviousness-Type Double Patenting," Duane Morris Alert, September 11, 2023
- Co-author "Supreme Court Affirms Federal Circuit Ruling Regarding Satisfaction of Enablement Requirement," Duane Morris Alert, May 19, 2023
- Co-author, "Finding Needles in a Haystack and Driving Down One-Way Streets: Recent Developments in the Application of Estoppel in Patent Proceedings," Duane Morris Alert, April 13, 2023
- Co-author, "Customer-Suit Exception Extends to Joinder of Customers and Manufacturers in the Same Suit," Duane Morris Alert, February 10, 2023
- Co-author, "Broad Patent Prosecution Bars Risk Effectively Decoupling Complementary Patent Litigation and Prosecution Practices," Duane Morris Alert, August 22, 2022
- Co-author, "The Other Side of the Coin: Diligent Patent Prosecution Does Not Lead to Unreasonable Delay and Application of Prosecution Laches," Duane Morris Alert, July 22, 2022
- Co-author, "Silence Is Not Necessarily Golden for Negative Patent Claim Limitations," Duane Morris Alert, July 7, 2022
- Co-author, "1,1,3,3-Tetramethylguanidine-Mediated Zwitterionic Ring-Opening Polymerization of Sarcosine-Derived N-Thiocarboxyanhydride toward Well-Defined Polysarcosine,” Macromolecules, March 30, 2022
- Co-author, "Paying for Your Delay: Application of Prosecution Laches Can Render Issued Patents Unenforceable," Duane Morris Alert, August 17, 2021; republished in Intellectual Property & Technology Law Journal, November-December 2021
- Co-author, "Chapter 17," eCourse Handbook, Advanced Patent Prosecution Workshop 2021: Claim Drafting & Amendment Writing, July, 2021
- Co-author, "Sharing the Blame: Parent Company Can Still Be on the Hook for Subsidiary's Alleged Infringement," Duane Morris Alert, May 25, 2021
- Co-author, "Considerations and Implications of the Proposed Temporary Waiver of COVID-19 Vaccine-Related Intellectual Property Rights," Duane Morris Alert, May 6, 2021
- Co-author, "Texas Court Will Not Delay In-Person Trial to Permit Vaccination of Participants," Duane Morris Alert, March 22, 2021
- Co-author, "Who Watches the Watchmen? Supreme Court to Decide Fate of Administrative Patent Judge Appointments," Duane Morris Alert, March 8, 2021
- Co-author, "Forum Selection Clause Held Inapplicable for Precluding Inter Partes Review Before the Patent and Trial Appeal Board," Duane Morris Alert, February 8, 2021
- Co-author, "Patent-Eligible Subject Matter in Biotech Should Recite More Than a 'Telescope'," Duane Morris Alert, December 8, 2020; reprinted in Intellectual Property & Technology Law Journal, March 2021
- Co-author, "Playing Your Cards Right: Arguments Against Obviousness Can Be Detrimental for Satisfying the Written Description Requirement," Intellectual Property & Technology Law Journal, October 2020
- Co-author, "Playing Your Cards Right: Arguments Against Obviousness Can Be Detrimental for Satisfying the Written Description Requirement," Duane Morris Alert, July 2, 2020
- Co-author, "The Capricious and Ever-Changing Nature of IP Practice Under COVID-19: Deadline Extensions, Sometimes with a Catch, and Ungracious Grace Periods," Duane Morris Alert, May 4, 2020
- Co-author, "Numerical Ranges: More Than Just Endpoints in Patent Process," Duane Morris Alert, February 14, 2020
Co-author, "Polypeptoid Polymers: Synthesis, Characterization, and Properties," Biopolymers 2017, 10.1002/bip.23070.
Co-author, "lnterfacial Ring-Opening Polymerization Amino-Acid-Derived N-Thiocarboxyanhydrides Toward Well-Defined Polypeptides," ACS Macro Lett. 2017, 6, 836-840.
Selected Speaking Engagements
- Panelist, Career Panel, 2023 Gulf Coast Polymer Conference, December 2, 2023
- Panelist, Career Panel, 2022 Applied Polymer Technology Extension Consortium, November 9, 2022
- Speaker, "More Than Just a Journal Article: Exploring Copyrights Behind Academic Publishing," American Chemical Society Fall 2021 National Meeting, August 24, 2021
- Speaker, "Alternative Career Paths: A World Outside the Lab," 2020 TAAB Virtual Symposium, Taiwanese American Association of Biotechnology, Webinar, November 21, 2020
- Speaker, "Lab Bench to Bar: Career Paths in Patent Law," Graduate Student Professional Development Seminar, Lousiana State University Department of Chemistry, Webinar, November 18, 2020
- Presenter, "Tensions Between Nonobviousness and Written Description in U.S. Patent Law," Duane Morris LLP, Webinar, October 27, 2020