Ellis, Ph.D., Joan

Education

Southern Illinois University

B.A.
  • cum laude

New York University School of Medicine

Ph.D.

The George Washington University National Law School

J.D.

Joan Ellis, Ph.D.

Member

Overview

Dr. Ellis has over 25 years experience in the patent industry, she focuses her practice on patent prosecution and litigation with a particular emphasis in the chemical and life science fields. Dr. Ellis represents clients in inter partes and ex parte appeals before the USPTO Board of Appeals and Interferences as well as patent infringement litigations at the Court of Appeals for the Federal Circuit and the International Trade Commission. She regularly serves as an expert witness in district court litigations involving inventorship, inequitable conduct, derivation, double-patenting, and priority disputes as well as USPTO procedure. She also conducts arbitration proceedings involving a wide variety of contractual and patent disputes. 

Dr. Ellis has a strong life sciences background and over 20 years experience as a patent examiner and an Administrative Patent Judge at the U.S. Patent and Trademark Office. As a judge, Dr. Ellis authored over 250 ex parte and 50 inter partes decisions. Prior to becoming a lawyer, she was a Damon Runyan fellow at the Rockefeller University where she conducted research involving genetic material. Her experimental areas included molecular biology, particularly as it relates to the study of human malarial genes and immunology. She holds a patent directed to an antigenic malaria surface protein.

Dr. Ellis also serves as a panelist for the American Arbitration Association and is an Officer of the Board of the Giles S. Rich American Inn of Court. She currently is an Adjunct Professor at the University of Maryland, Baltimore Campus, where she teaches legal and bio-ethical issues in the science professions.

In addition, Dr. Ellis has represented political asylum applicants and veterans pro bono before the Department of Homeland Security and the United States Court of Appeals for Veterans Claims and the Board of Veteran’s Appeals, respectively.

Prominent Assignments

Of counsel, Sinorgchem Co. v. International Trade Commission v. Flexsys America LP, 511 F.3d 1132 (Fed. Cir. 2007).

Notable high profile BPAI decisions: 

  • Singh v. Brake, Interference No. 102,728 (BPAI 2001) (conception of a DNA construct comprising a small leader sequence derived from yeast), aff’d, Singh v. Brake, 317 F.3d 1334 (Fed. Cir. 2003).
  • Hitzeman v. Rutter, Interference Nos. 102,416 and 102, 989 (BPAI 1999) (conception of a vector capable of expressing 22 nm hepatitis B surface antigen particles in yeast), aff’d, Hitzeman v. Rutter, 243 F.3d 1345 (Fed. Cir. 2001).
  • Ex parte Cortright, Appeal No. 94-4260 (BPAI 1997) (new ground of rejection that the specification did not enable a method of restoring hair growth) aff’d-in-part, In re Cortright, 165 F.3d 1353 (Fed. Cir. 1999).
  • In re Mayne, Appeal No. 93-3512 (BPAI 1995) (affirming obviousness rejection of a protein similar in structure and function to a known protein), aff’d, In re Mayne, 104 F.3d 1339 (Fed. Cir. 1997).

Professional Involvement

  • Maryland State Bar Association, Member
  • District of Columbia Bar, Member
  • Federal Circuit Bar Association, Member
  • United States Supreme Court Bar, Member
  • United States Patent and Trademark Office, Registered
  • American Arbitration Association, Chair and Panelist
  • American Intellectual Property Law Association (AIPLA), Member
  • American Bar Association, Intellectual Property Law and Litigation Section, Member
  • Intellectual Property Owner’s Association (IPO), Member
  • Giles S. Rich American Inn of Court, Officer
  • Patent Office Inter Partes Proceedings (U.S.) Committee, Member

Publications/Presentations

"The Supreme Court Holds Human Genes Are Unpatentable," J. Ellis, Ph.D. Dickinson Wright's Intellectual Property Legal News, Vol. 1, No. 4, July 25, 2013, also published In Dickinson Wright's Healthcare Legal News Vol. 3, No.4, August 7, 2013.

"On Patenting Genes," J. Ellis, Ph.D., The Scientist, Vol. 27, No.7, July 2013.

"Are Human Genes Patentable," J. Ellis, Ph.D., Dickinson Wright's Intellectual Property Legal News, Vol. 1, No. 2, March 22, 2013.

May 17, 2011, National Institutes of Health, lecture on Prometheus v. Mayo (Fed. Cir. 2010).

"Reexamination Strategy," J. Ellis, Ph.D. IPO Inter Partes Committee meeting, November 9, 2010.

"New USPTO Rules for Claim Examination and Continuing Applications," J. Ellis, PhD., Venable's IP Law Alert, September, 2007.

"USPTO Proposes New Rules of Ex Parte practice Before the Board of Appeals and Interferences," J. Ellis, Ph.D., Venable's IP Law Alert, August 2007.

"The Year in Review 2006, Pharmaceutical Biotech/Chemical Patent Law," Ludwig, Ellis and Gollln, Venable LLP publication.

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Acknowledgements

  • Awarded American Intellectual Property Law Association Examiner of the Year Award, 1994