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Sean Passino, Esq., Ph.D. • Partner

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spassino@ipfirm.com
703-535-6525

Profile

Dr. Passino’s practice concentrates on counseling about intellectual property management, patent prosecution, opinions, license agreements, and interference strategy. In particular, Dr. Passino’s practice typically involves clients in the businesses of promoting the life sciences and/or nanotechnology, including pharmaceuticals, proteins, nucleic acids, fermentation, vaccine development, genetic engineering, diagnostics, antibody design, biopolymer production and use, food and drug formulations, and small molecule synthesis.

Dr. Passino graduated first in his college’s class at The Pennsylvania State University, before he earned a Ph.D. from the University of Chicago. After a postdoctoral position, he started working at an international patent law firm, registered as a patent agent in the United States Patent and Trademark Office, and attended law school at the Georgetown University Law Center. Since graduating from Georgetown Law, he has been admitted to the Virginia State Bar, District of Columbia Bar, Supreme Court of the United States, United States Court of Appeals for the Federal Circuit, and United States District Court Eastern District of Virginia. Dr. Passino is a Registered Patent Attorney in the USPTO.

Practice Highlights & Technologies

Dr. Passino proved his counseling experience by creating patent prosecution practices from scratch, setting policies for managing IP issues ranging from standard forms through firm-wide training, and advising other attorneys that erred. Moreover, Dr. Passino participated in parallel litigations and reexaminations; filed reissue applications; assisted experts; filed petitions and appeals; prepared and prosecuted patent applications; and applied for Patent Term Adjustments and Hatch-Waxman Patent Term Extensions. When appropriate, Dr. Passino filed suit against the United States Patent and Trademark Office. And, especially for his life sciences clients, Dr. Passino copied claims to provoke interferences, and he was a counsel of record during interferences.

Publications & Presentations

Dr. Passino has continued to innovate and educate. For example, he recently was an invited speaker at The American Academy of Nanomedicine, in Potomac, MD, in September 2008, The European Union’s IPR in Nanotechnology Workshop, in Brussels, Belgium, in April 2007, and the Symposium on Nanotechnology at the World Future Society, in Minneapolis, MN, in July 2007. Additionally, he published several articles, including the following: Sean Passino, Rule changes at the PTO remain in limbo, The Nat’l Law Journal, Aug. 17, 2009; Sean Passino, et al., Proposed rules seek to reduce pendency, backlog, The Nat’l Law Journal, Dec. 4, 2006; Sean Passino, et al., En banc decisions play important role in recent patent cases, Nat’l Law Journal, Feb. 28, 2005; Sean Passino, et al., Re-examinations are ordered due to ‘public outcry’, Nat’l Law Journal, May 10, 2004; Sean Passino, et al., Written Description Traps for Antibody Claims, 86 J. Pat. & Trademark Off. Soc’y 317, 318-19 (2004); and Sean Passino, et al., Foreign-Filed PCT Patent Applications: An Asymmetrical Patent-Defeating Effect, 85 J. Pat. & Trademark Off. Soc’y 11 Nov. 2003.

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