James J. Mullen III, Ph.D.

James J. Mullen III, Ph.D.

Partner, Morrison & Foerster LLP

James Mullen’s practice combines his scientific experience with his legal training tocraft commercially relevant solutions for his clients’ intellectual property challenges. He is the founder and head of the firm’s Antibody Patent Group and leads the San Diego office Patent Group.

As a patent prosecutor, Dr. Mullen is well versed in obtaining focused patent protection that provides a commercial advantage in the marketplace, but prosecution is just one aspect of his practice. He is also experienced in conducting intellectual property due diligence studies on both the buy- and sell-side for acquisitions and funding purposes. Dr. Mullen additionally provides counseling on infringement issues and post-issuance proceedings, including inter partes review and reexamination proceedings for market-leading biotechnology and pharmaceutical companies, as well as small to midsize life sciences entities.

Dr. Mullen brings a history of industry experience, applying an insider’s understanding of the scientific development process and the challenges that companies face to craft and execute solid patent strategies for his clients. Prior to graduate school and law school, Dr. Mullen worked in various laboratories: at Hybritech, Inc., a pioneer in the development of monoclonal antibodies, and at the Research Institute of Scripps Clinic. He holds a Ph.D. in biomedical sciences fromthe University of Texas, and a bachelor’s degree in biochemistry and cellular biology from the University of California San Diego.

Dr. Mullen counsels clients pursuing inventions in a variety of biotechnology-related areas, including molecular diagnostics, clean technology, cancer therapeutics and diagnostics, infectious disease therapeutics, and small molecule screening protocols, as well as those seeking protection for novel nucleic acid and amino acid sequence protection.

I3: An International Perspective: What Everyone Should Consider When Writing a Patent Application for Global Examination and Licensing

Regatta A

The focus will be on strategies that will help applicants secure useful and valuable IP protection in the US, Europe and China. Using real life examples to illustrate our point, the session will highlight the jurisdictional differences in patentable subject matter (for both biology type subject matter and software inventions); tactics for avoiding added matter […]