Eric Zylstra is a senior associate in our Intellectual Property & Technology Practice Group. Eric’s practice focuses on the areas of patent prosecution, both domestic and international; due diligence for licensing, acquisitions and mergers; opinions, such as invalidity, patentability, non-infringement and inventorship; and the design, performance and analysis of clearance, freedom-to-operate and patentability searches. Eric has successfully prosecuted and evaluated patents in technological areas, including small molecules, pharmaceutical and agricultural formulations, polymers, biotechnology, dyes and batteries.

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  • Co-devised patent portfolio strategy for potential client, a startup company focusing on small-molecule drugs and antibacterial compounds, and successfully pitched client. Secured allowance of first patent (U.S. Pat. No. 8,853,278) in about six months. Currently implementing portfolio strategy and managing most aspects of client relationship.
  • Co-developed new theory of patentability for client's method-of-use patent (U.S. Pat. No. 6,284,770) covering an already-marketed drug. Carried out reexamination to overcome closely related art by an alternative theory of patentability, extending patent protection and allowing re-listing of the reexamined patent in the Orange Book.
  • Devised strategy and drafted brief for successful appeal in U.S. Pat. App. No. 14/099,882 using post-filing art to demonstrate enablement of the claimed method.
  • Drafted and prosecuted US, foreign and international applications for a range of chemical and biological inventions, including pharmaceutical compounds and formulations, other compounds and formulations (e.g., U.S. Pat. No. 8,481,752), and polymers.

Education

  • University of San Francisco School of Law, magna cum laude, J.D.
  • University of California at Berkeley, Ph.D., Synthetic Chemistry
  • Massachusetts Institute of Technology, S.B., Chemistry and Literature

Admissions

  • Illinois, 2018
  • California, 2013
  • U.S. Patent and Trademark Office
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