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

Prominent Assignments

Experience

 

Dr. Ellis focuses her practice on patent prosecution and litigation with a particular emphasis in biotechnology, and the pharmaceutical and life science industries. 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 litigations involving inventorship and priority disputes as well as USPTO procedure. She also conducts arbitration proceedings involving a wide variety of patent disputes.

 

Formerly an Administrative Patent Judge at the U.S. Patent and Trademark Office, Board of Patent Appeals and Interferences (BPAI), Dr. Ellis has authored over 250 ex parte and 50 inter partes decisions. Prior to becoming a lawyer, she spent approximately 10 years as a scientist conducting basic 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.

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

Community Involvement

  • 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

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

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