Janelle Waack's practice focuses on interference matters before the United States Patent and Trademark Office Board of Appeals and Patent Interferences. She also has experience in patent litigation matters, reexamination and reissue proceedings, infringement and validity opinions and counseling for the strategic development of patent portfolios.
In patent litigation matters, Ms. Waack has experience conducting claim construction and summary judgment hearings, examination and cross-examination of fact and expert witnesses at trial and in deposition, managing discovery, conducting mediation and settlement and appeals to the Federal Circuit. She is also experienced in handling multiple proceedings when a client is faced with the complexities of concurrent litigation and interference or re-examination proceedings on the same patent.
Ms. Waack has experience working as a Patent Examiner at the US Patent and Trademark Office, where she worked in the biotechnology group conducting prior art searches, making decisions on patentability and preparing appeal briefs to present to the Board of Patent Appeals and Interferences. Before becoming an attorney, Ms. Waack also worked as a patent agent at a Washington DC law firm, where she prosecuted numerous US and foreign patent applications.
Publications
“Effects of the America Invents Act on Inventorship Disputes,” American Bar Association Intellectual Property Litigation Newsletter, Winter 2012
“Value of trade secrets bolstered by new prior commercial use defense,” InsideCounsel, March 20, 2012.
“Determining the best time to file a patent application,” InsideCounsel, February 21, 2012.
“Interference proceedings in post-AIA America,” InsideCounsel, February 14, 2012.
“Six practical ways to improve your patent strategy in 2012,” InsideCounsel, January 24, 2012.
“PTO to expand its role in patentability: Lawyers contemplating the two new review proceedings may take lessons from two existing ones,” National Law Journal, January 23, 2012.
“Supreme Court takes on statutory subject matter,” InsideCounsel, January 10, 2012.
“Patent facts and figures for fiscal year 2011,” InsideCounsel, December 27, 2011.
“Patent Reform: Practitioners Sound Off On The Merits And Drawbacks Of The Sweeping New Law,” National Law Journal, October 17, 2011.
“Senate Passes Patent Reform Bill Advancing Major Changes To U.S. Patent Law,” NDQ Client Alert, September 9, 2011.“U.S. House of Representatives Passes Patent Reform Bill Advancing Major Changes to U.S. Patent Law,” NDQ Client Alert, June 27, 2011.
Patent Law Handbook, Pretrial Discovery section. West Group, 2001, (Contributing author).
Patent Law Handbook, Personal Jurisdiction and Venue Section. West Group, 2001, (Contributing author).
"Recent Developments in Patent Law." Texas Intellectual Property Law Journal 3 (Spring 1996).
Speaking Engagements
Speaker, “Inter Partes Review and Post Grant Review Proceedings,” State Bar of Texas, Patent Workshop in Houston, Texas, March 21, 2012.
Speaker, “Intellectual Property Issues for Biotechnology in 2011,” BioFlorida, Annual Meeting in Tampa, Florida, October 24, 2011.
Speaker, “Leahy-Smith America Invents Act: What Does It Mean for Biotech?” BioHouston Patent Reform Seminar, October 19, 2011.
Speaker, “Statutory Subject Matter After Bilski and the America Invents Act,” Houston Intellectual Property Lawyers Association, 2011 Annual Institute on Intellectual Property Law, Galveston, Texas, October 8, 2011.
Speaker, “Major Provisions of the Leahy-Smith America Invents Act of 2011,” Novak Druce + Quigg LLP Internal Presentation, September 29, 2011.
Speaker, “What Are the Implications From Enactment of the America Invents Act?” BioHouston Breakfast Seminar, September 6, 2011.
Quotations
ABA Journal – quoted in “A New Mother of Invention: After Years of Setbacks, Patent Reform Finally Makes It Through,” December 1, 2011.
Inside Counsel – quoted in “America Invents Act Overhauls U.S. Patent System,” November 2011.
IP Law 360 – quoted in “First-to-File Patent System to Favor Big Biz,” September 14, 2011.
Fox Business News – “Businesses Cheer Patent Reform, Hurdles Still Loom,” September 13, 2011.
Practice Areas
Admissions
- United States Patent and Trademark Office
- United States Court of Appeals for the Federal Circuit
- Texas
Education
- George Washington University Law School, J.D.
- Tulane University European Institute, Certificate, European Studies
- University of Wisconsin - Madison, B.S. Chemical Engineering
Professional Affiliations
- American Bar Association, Member
- American Intellectual Property Law Association, Member, Former Chair of Reporting Committee for the Biotechnology Section
- Federal Circuit Bar Association, Member
- Houston Intellectual Property Law Association, Member