Deborah L. Lu, Ph.D.

Areas of Practice

• Intellectual Property

• Patent Preparation and Prosecution

Admissions

• New York
• U.S. Patent and Trademark Office (USPTO)
• 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

Education

• Fordham University School of Law, J.D., 2004
• University of Michigan, Ph.D., Biological Chemistry, 1996
• University of Michigan, M.S., Biological Chemistry, 1992
• Cornell University, B.S., Biological Sciences, 1990

Experience

• Duane Morris LLP
  - Partner, 2018-present

• Vedder Price P.C.
  - Shareholder, 2010-2018

• Frommer Lawrence & Haug LLP
  - Associate, 2005-2010

Professional Activities

• Future Medicinal Chemistry
  - Peer Reviewer

• Faculty, Practising Law Institute

• Faculty, American Conference Institute

• New York Intellectual Property Law Association

• Pharmaceutical Patent Analyst
  - Member, Editorial Board

• BNA Life Sciences Law & Industry Report
  - Member, Editorial Advisory Board

• Polytechnic Institute of NYU
  - Adjunct Professor, 2013-2015

• Protein Sciences Corporation Advisory Board, 2012-2017

• Bloomberg BNA Life Sciences Law & Industry Report (LSLR)
  - Editorial Advisory Board, 2011-present

• Pharmaceutical Patent Analyst
  - Editorial Board, 2011-present

• Future Medicinal Chemistry
  - Peer Reviewer, 2010-present

• Practising Law Institute
  - Faculty, 2008-present

• American Conference Institute
  - Faculty, 2007-present

Honors and Awards

• Listed in World Intellectual Property Review (WIPR) Leaders Directory, 2022 and 2023
• Ranked in Patexia's 4th Annual Patent Prosecution Intelligence Report as a top 10 attorney in Patent Prosecution, 2022

Selected Publications

• 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, "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, "Russian Sanctions Could Impact IP Holdings in Russia and Eurasia," Duane Morris Alert, March 25, 2022
• Quoted, "How Counsel Can Seal CRISPR Collaboration Deals," Managing IP, February 18, 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
• Quoted, "Inside the Biden Administration’s Support for a Vaccine Patent Waiver," MM+M, May 10, 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
• Acknowledged, "Evidence-Based Policies in Uruguay Are Successful for Tackling COVID-19," Open Journal of Political Science, 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
• Author, "What Being Asian American Means To Me," Duane Morris Diversity & Inclusion Blog, May 19, 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, "US Privilege While Operating on the World Stage," Advanced Patent Prosecution Workshop Course Handbook, Practising Law Institute, 2019

• Co-author, “US patent law and the attorney–client privilege,” Pharmaceutical Patent Analyst 2013 2(1), 1-3.

• Co-author, “How To Manage Collaborative Inventions,” Inside, 2012 30(2), 39-42.

• Co-author, “Is Mayo v. Prometheus the End of Diagnostic Patents?” Bloomberg BNA Life Sciences Law & Industry Report 2012 6(16), 845.

• Co-author, “Are laboratory notebooks necessary in a first inventor to file world?” J Commer Biotechnol. 2012 18(3), 67-68.

• Co-author,”US patent reform 2011: a few things to remember," Pharmaceutical Patent Analyst 2012 1(2), 121-123.

• Co-author, “Post-grant review: The good, the bad and the ugly for biotechnology companies,” J Commer Biotechnol. 2012 18(1), 97-99.

• Co-author, “Judicial Activism: A Biotech Patent Perspective,” Bloomberg Law Reports: Intellectual Property 2011 5(41):35-38.

• Co-author, “Intellectual property issues for veterinary pharmaceuticals in the USA,” Future Med. Chem 2011 3(7):847–850.

• Co-author, “Commentary regarding decision in Bilski from a biotech perspective,” J Commer Biotechnol. 2010 16(4), 360-361.

• Co-author, “Commentary regarding decision in Myriad Genetics on ‘isolated” DNA claims,” J Commer Biotechnol. 2010 Apr 27;advance online publication.

• Co-author, “Patent prosecution of biotechnology and pharmaceutical patents in a changing legal landscape,” Future Med. Chem. 2010 Jan;2(1):7-9.

• Co-author, “Patentability issues surrounding antivirals,” Nat Biotechnol. 2007 Dec;25(12):1403-4.

• Co-author, “The patentability of antibodies in the United States,” Nat Biotechnol. 2005 Sep;23(9):1079-80.

• Author, Post-transcriptional regulation of luteinizing hormone/human chorionic gonadotropin receptor expression, Ph.D. thesis, 1996

• Co-author, “3' untranslated region-mediated regulation of luteinizing hormone/human chorionic gonadotropin receptor expression,” Biochemistry, 1996 Sep 24;35(38):12347-53.

• Co-author, “Molecular cloning of a novel luteinizing-hormone/human-chorionic-gonadotropinreceptor cDNA. Identification of a long 3' untranslated region and cDNA sequence of the major transcript in rat ovary,” Eur J Biochem. 1994 Jun 15;222(3):753-60.

• Co-author, “Loss of lutropin/human choriogonadotropin receptor messenger ribonucleic acid during ligand-induced down-regulation occurs post transcriptionally,” Endocrinology, 1993 Jan;132(1):235-40.

Selected Speaking Engagements

• Speaker, "Patent Fundamentals Bootcamp 2023: An Introduction to Patent Drafting, Prosecution, and Litigation," Practising Law Institute, September 12, 2023
• Speaker, "Pro Bono Poll Watching," American Bar Association Pro Bono Committee Webinar, July 20, 2023
• Speaker, "An Overview of Patent Prosecution," PLI Patent Fundamentals Bootcamp 2022: An Introduction to Patent Drafting, Prosecution, and Litigation," September 14, 2022 
• Clinician, "Clinic II: Patent Amendment Writing, PLI Patent Fundamentals Bootcamp 2022: An Introduction to Patent Drafting, Prosecution, and Litigation," September 14, 2022 
• Moderator, "The 3 Pillars of Your IP Strategy: Innovation, Prosecution, and Portfolio Management," Centerforce Women in Law IP Summit, June 15, 2022
• Speaker, "Protecting CAR-T and other Immunotherapies: In-House Challenges," LSPN North America Spring Conference, May 12, 2022
• Opening Remarks, 20th Advanced Summit on Life Sciences Patents Conference, June 2, 2022
• Speaker, "Odds and Sods – The Importance of Plant Inventions to Everyday Life," Intellectual Property Law Committee, Nassau County Bar Association, September 23, 2021
• Speaker, "Advanced Patent Prosecution Workshop 2021: Claim Drafting & Amendment Writing," Practising Law Institute, Webinar, July 6, 2021
• Presenter, "Patent Amendment Writing," Practising Law Institute's Patent Fundamentals Bootcamp 2021, June 3, 2021
• Moderator, "Tensions Between Nonobviousness and Written Description in U.S. Patent Law," Duane Morris LLP, Webinar, October 27, 2020
• Speaker, "18th Advanced Summit on Life Science Patents," American Conference Institute, New York, August 4-6, 2020
• Speaker, "Advanced Patent Prosecution Workshop 2020: Claim Drafting & Amendment Writing," Practising Law Institute, Webinar, July 8, 2020
• Speaker, "US Patent-Eligible Subject Matter – Latest Thinking," Chartered Institute of Patent Attorneys (CIPA), Webinar, July 2, 2020
• Speaker, "Entering the U.S. Market for European Pharma: Essential IP and Regulatory Considerations," Duane Morris Webinar, June 23, 2020
• Clinician, "Patent Fundamentals Bootcamp 2020: An Introduction to Patent Drafting, Prosecution, and Litigation," Practising Law Institute Webinar, June 2-4, 2020
• Speaker, "How COVID-19 Is Affecting Life Sciences and Medical Technologies," Duane Morris Webinar, April 16, 2020

• Speaker, "Patent Amendment Writing," Patent Fundamentals Bootcamp 2019: An Introduction to Patent Drafting, Prosecution, and Litigation, Practising Law Institute, June 13, 2019

• Speaker, "An Overview of Patent Prosecution," Patent Fundamentals Bootcamp 2019: An Introduction to Patent Drafting, Prosecution, and Litigation, Practising Law Institute, June 13, 2019

• Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2018: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 11-12, 2018

• Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2018: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 13-15, 2018

• Speaker, “Updates from the U.S.,” Chartered Institute of Patent Attorneys (CIPA)’s 2018 East of England Meeting, Cambridge, UK, March 15, 2018

• Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2017: Claim Drafting & Amendment Writing, Practising Law Institute, , New York, July 25-26, 2017

• Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2017: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 14-16, 2017

• Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2016: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 14-15, 2016

• Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2016: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 15-17, 2016

• Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2015: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 16-17, 2015

• Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2015: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 15-17, 2015

• Speaker, “Focus on Antibodies: Understanding Current § 112 Standards for Written Description,” Advanced Forum on Life Sciences Patents, American Conference Institute, New York, January 13-14, 2015

• Speaker, “Workshop: Combating Gender Stereotypes in the Life Sciences Legal Community: Open Forum and Working Group on Overcoming Implicit Bias,” Women Leaders in Life Sciences Law, American Conference Institute, Boston, July 28–29, 2014

• Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2014: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 17-18, 2014

• Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2014: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 11-13, 2014

• Speaker, “35 U.S.C. 103 and the Court of Appeals for the Federal Circuit (CAFC),” Prior Art and Obviousness 2014: Current Trends in Sections 102 and 103, Practising Law Institute, New York, May 8, 2014

• Speaker, “Protecting Intellectual Property Rights by Enforcing Patent Rights Abroad and Understanding the Impact of Judicial Determinations by Foreign Courts,” Advanced Forum on Managed Patent Litigation, American Conference Institute, New York, December 10-11, 2013

• Speaker, “Exploring the Decision in the Bowman v. Monsanto Case. Global Patenting Strategy and Practice,” Crops & Chemicals USA 2013: Plant Biotechnology, Raleigh, North Carolina, August 7-8, 2013

• Speaker, “Managing Unique Challenges and Investigating Emerging Trends in Foreign Patent Litigation,” Global Patenting Strategy and Practice, American Conference Institute, New York, July 15-16, 2013

• Speaker, “Working Group Session: Assessing the Impact of New PTO Procedures under the AIA on Paragraph IV Litigation,” Paragraph IV Disputes, American Conference Institute, New York, May 7-8, 2013

• Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2012: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 19-20, 2012

• Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2012: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 13-16, 2012

• Speaker, “Working Group Session: Assessing the Impact of New PTO Procedures under the AIA on Paragraph IV Litigation,” Paragraph IV Disputes, American Conference Institute, New York, April 24-25, 2012

• Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 15-17, 2011

• Speaker, “Using A-Delays, B-Delays and C-Delays to Your Advantage,” The Life Sciences Lawyer’s Guide to Patent Term Adjustment and Patent Term Extensions, American Conference Institute, New York, January 26-27, 2011

• Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2010: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 16-18, 2010

• Speaker, “Patent Prosecution,” Fundamentals of Patent Prosecution 2008: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 18-20, 2008

• Speaker, “Perfecting Claim Drafting and Prosecution in Life Sciences Patent Applications,” Pharma/Biotech Patent Claim Drafting & Prosecution, American Conference Institute, New York, February 27, 2008

• Speaker, “Life Sciences Patents: What is Patentable?” Pharma/Biotech Patent Boot Camp Basic Training in Core IP and Related Regulatory Competencies for the Life Science Industries, American Conference Institute, San Francisco, September 18-19, 2007

• Speaker, “The "Win-Win" Collaborative Agreement: Ethical and Practical Negotiating and Drafting Strategies,” Structuring, Negotiating and Managing Win-Win Pharma and Biotech Collaborative Agreements, American Conference Institute, San Francisco, July 16-18, 2007

• Speaker, “Life Sciences Patents: What is Patentable?” Pharma/Biotech Patent Boot Camp Basic Training in Core IP and Related Regulatory Competencies for the Life Science Industries, American Conference Institute, New York, June 21-22, 2007

• Speaker, “Key Agencies Overview: Understanding the Jurisdiction and Interplay of the FDA and PTO in the Patenting of Drugs and Biologics,” Pharma/Biotech Patent Boot Camp Basic Training in Core IP and Related Regulatory Competencies for the Life Science Industries, American Conference Institute, New York, June 21-22, 2007

Representative Matters

• Delivered one of the first post-pandemic live oral arguments at the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) on behalf of Rijk Zwaan, a vegetable breeding company, in connection with the patentability of a new hybrid celery. The PTAB reversed the USPTO examiner and held that client’s new hybrid celery is adequately described by the biological deposit of seed along with the description in the patent application and that the hybrid celery is nonobvious (patentable).