September 4, 2010   11:31 PM EST
John K. Weatherspoon, PhD
Of Counsel
John Weatherspoon, Of Counsel, received a B.S. in Neuroscience from Duke University in 1990, and a Ph.D. in Pharmacology from The George Washington University in 1998. He received his J.D. in 2002 from the George Mason University School of Law where he was active in the Giles Rich Intellectual Property Moot Court Competition and other activities with a focus on Intellectual Property Law. Dr. Weatherspoon is admitted to practice law in Maryland and is registered to practice before the U.S. Patent and Trademark Office.

Prior to joining Stein McEwen LLP, Dr. Weatherspoon was with another intellectual property law firm where he counseled primarily pharmaceutical and biotech clients. In addition, he spent several years as a patent attorney at a few large general practice law firms.

Prior to his legal career, Dr. Weatherspoon spent several years in the 1990s engaged in biotechnology and pharmaceutical research, including research at the Duke University Medical Center; the Radiobiology Research Institute, an institute of the Department of Defense; and also in the Pharmacology Division of Burroughs Wellcome Company, now part of GlaxoSmithKline. Furthermore, he was a Biotechnology Patent Examiner at the U.S. Patent and Trademark Office.

Dr. Weatherspoon has extensive experience with patent preparation and prosecution. In particular, his experience includes drafting and prosecuting numerous patent applications in the chemical, biotechnological, and pharmaceutical arts. Moreover, he has handled numerous patent applications covering a broad range of subject matter including, for instance, new chemical entities, polymorphs, drug delivery systems, high throughput systems, separation technology, inorganic chemistry, organic chemistry, analytical chemistry, nanotechnology, bioengineering, genetic engineering, molecular biology, genomics, proteomics, oncology, developmental biology, cell biology, gene therapy, protein biochemistry, vaccine technology and immunology, neurobiology, molecular diagnostics, tissue engineering, stem cells, bioinformatics, medical devices, and analytical instrumentation.

Dr. Weatherspoon has several years’ experience with patent reissue and reexamination proceedings; interference practice; strategic national and international patent portfolio development and management; patentability, validity, invalidity, infringement, non-infringement, and freedom to operate opinions; intellectual property due diligence; client counseling; pre-litigation analysis; patent litigation; and preparation of license agreements. Furthermore, he has extensive experience with Hatch-Waxman matters, including analysis of Orange Book listed patents, and preparation of ex parte Reexamination requests of third-party patents.

In addition, he is experienced in the areas of technology transfer, patent appeals and oppositions, and counseling on corporate matters. He regularly assists clients with strategic issues involving the acquisition, development, patenting, leveraging, and monetization of their intellectual property.

Dr. Weatherspoon has been active in professional associations and education on intellectual property, law, technical, and other issues. For instance, he has taught numerous courses discussing intellectual property at the Johns Hopkins University Carey Business School, and he frequently gives presentations on Intellectual Property to emerging technology companies and other audiences.

Dr. Weatherspoon organized a conference with The Johns Hopkins University that was held in April, 2010 on “Exploring Strategies for Achieving the Goals of Pre-Clinical Translational Research” with a focus on intellectual property protection. This conference was sponsored by several organizations including the Johns Hopkins University Carey Business School, the Brain Sciences Institute of the Johns Hopkins University School of Medicine, and the Global Intellectual Property Center of the U.S. Chamber of Commerce.

Representative Patent Litigations

  • MedImmune Oncology v. Sun Pharm. Indus., No. 04-2612, U.S. District Court for the District of Maryland (D. Md. 2007). Represented defendant in patent litigation over patents pertaining to the drug amifostine (Ethyol®); and prepared response to plaintiff’s Citizen Petition at the U.S. FDA, on behalf of the defendant.
  • Verizon Servs. Corp. v. Vonage Holdings Corp., United States District Court for the Eastern District of Virginia. (E.D. Va. 2007). Represented plaintiff in patent litigation over patents on voice over IP (VoIP) technology; obtained judgment for plaintiff in this patent infringement suit.
  • Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1326 (Fed. Cir. 2002); represented defendant before the U.S. Court of Appeals for the Federal Circuit; obtained summary judgment of non-infringement for the defendant.

Publications and Presentations
Dr. Weatherspoon has been active in professional associations and education on intellectual property, law, technical, and other issues. For instance, he has taught numerous courses discussing intellectual property at the Johns Hopkins University Carey Business School, and frequently gives talks on Intellectual Property to emerging technology companies and other audiences, including those listed below:

  • Speaker, Practical Tips for Obtaining Effective and Enforceable U.S. Patents, Inventors' Network of the Capital Area (June, 2009)
  • Speaker, Intellectual Property Issues in Structuring Deals, Montgomery County, Maryland Technology Incubation Center (September, 2009)
  • Speaker, Practical Tips for International Patent Protection, Inventors' Network of the Capital Area (February, 2010)
  • Speaker, Technology Commercialization, The Johns Hopkins University Carey Business School (March, 2010)
  • Speaker, Obtaining Effective and Enforceable U.S. Patents, Executive MBA Program, Mt. Washington Conference Center, Johns Hopkins University (April, 2010)
  • Panelist, Practical Strategies For Researchers, Universities, Governments And Foundations To Facilitate And Sustain The Development And Funding Of Additional Translational Research Programs, The Johns Hopkins University (April, 2010)

Prior to his legal career, Dr. Weatherspoon published several peer-reviewed scientific papers, including those listed below:

  • King GL, Rabin BM, Weatherspoon JK. “5HT3 receptor antagonists ameliorate emesis in the ferret evoked by neutron or proton radiation.” Aviation Space Environmental Medicine 1999; 70(5): 485-92.
  • Weatherspoon JK, Werling LL. “Modulation of amphetamine-stimulated [3H]dopamine release from rat pheochromocytoma (PC12) cells by sigma type 2 receptors.” Journal of Pharmacology and Experimental Therapeutics 1999; 289(1): 278-84.
  • Weatherspoon JK, Gonzalez-Alvear GM, Werling LL. “Regulation of [3H]norepinephrine release from guinea pig hippocampus by sigma2 receptors.” European Journal of Pharmacology 1997; 326: 133-8.
  • Weatherspoon JK, Frank AR, Werling LL. “Neurotensin, N-acetyl-aspartylglutamate and beta-endorphin modulate [3H]dopamine release from guinea pig nucleus accumbens, prefrontal cortex and caudate-putamen.” Neuropeptides. 1996; 30(5): 497-505.
  • Weatherspoon JK, Gonzalez-Alvear GM, et al. “Regulation of [3H]dopamine release from mesolimbic and mesocortical areas of guinea pig brain by sigma receptors.” Schizophrenia Research 1996; 21(1): 51-62.
  • King GL and Weatherspoon JK. “Mechanisms and Control of Emesis.” Eds. Bianchi, Grelot, Miller and King, Colloque Inserm, John Libbey Eurotext Ltd., 1992; 223: 17-226.
  • Rigdon GC, Weatherspoon JK. 5-“Hydroxytryptamine 1a receptor agonists block prepulse inhibition of acoustic startle reflex.” Journal of Pharmacology and Experimental Therapeutics 1992; 263(2): 486-93.

 


Washington, D.C.
jweatherspoon@smiplaw.com
Tel: 202.216.9505
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Practice Areas:
Patent Prosecution; Trademarks; IP Licensing; Patent Litigation; Technology Transfer; Hatch-Waxman

Bar Memberships:

  • U.S. Patent and Trademark Office
  • Maryland
Law School:
  • The George Mason University School of Law, J.D.

Graduate School:

  • Ph.D. (Pharmacology) from The George Washington University

College:

  • B.S. (Neuroscience) from Duke University in 1990

Voluntary Memberships:

  • AIPLA (American Intellectual Property Law Association)
  • MSBA (Maryland State Bar Association)
 
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