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Irah H. Donner

PARTNER, NEW YORK



Irah Donner concentrates on patent prosecution, technology audits, intellectual property transactional due diligence, licensing and litigation support.

Mr. Donner's practice focuses on the counseling, acquisition and enforcement of all forms of intellectual property rights, with particular emphasis in the patenting of business methods, Internet, financial products and computer hardware and software patent applications. Mr. Donner has significant industry experience in designing software applications for large-scale computer systems due to his work in the facility analysis and control field at Bell Communications Research (BELLCORE), as well as in designing software-implemented controllers for functional electrical stimulation of paralyzed muscle at the Cleveland Veterans Administration Hospital.

Representative Matters

  • Part of team defending financial institution in a patent infringement suit relating to automatic credit card approval system. Summary judgment of no-infringement affirmed on appeal to Federal Circuit
  • Representation of company for global framework for distributing software applications worldwide
  • Representation of company for online quote system for insurance product
  • Representation of company for computer system used to periodically fix currency exchange prices
  • Representation of company for medical integrated decision support system
  • Representation of company for web database and/or interaction system for staffing of personnel in various employment related fields
  • Representation of company for low energy method for changing the inclinations of orbiting satellites
  • Representation of company for inductor-capacitor resonant circuits

Honors and Awards

Mr. Donner was named a New York Super Lawyer. He was also recognized in "Top Attorneys In the New York Metro Area" by The New York Times.

Memberships
  • Member, American Intellectual Property Law Association (AIPLA)
  • Member, Institute of Electrical and Electronics Engineers (IEEE)
  • Member, Intellectual Property Law Advisory Board, Strafford Publications, Inc.
Activities
  • Adjunct professor of law at the American University, Washington College of Law, teaching the course "Patent Prosecution," from 2001-2004
  • Former associate editor for the American Bar Association (ABA) Computer Litigation legal journal
  • Former circuit reporter for the ABA IP Litigation legal journal
  • Former computer law editor of IEEE COMPUTER magazine
Speeches and Events
  • Speaker, "Bloomberg BNA: Top 10 Events in Patent Law and Prosecution in 2012," Bloomberg BNA Webinar, January 22, 2013
  • Speaker, "Third-Party Challenges Under the America Invents Act: Litigation Strategies," Bloomberg BNA, New York, NY, September 12, 2012
  • Moderator, "Investing in Intellectual Property Assets and Enforcement - Latest Changes in the Law and at the Patent Office Affecting Patent Value," Berkeley Research Group (BRG), New York, NY, March 22, 2012
  • Speaker, "Patent Best Practices: Prosecuting Under the New Guidelines," Patents for Financial Services Industry, WRG Research, Inc., July 28, 2011
  • Speaker, "Patent Reissue: Benefits, Limitations and Strategies: Leveraging the Reissue Process to Correct Defects and Protect IP Rights," Strafford July 12, 2011
  • Speaker, "Patent Law Update - Regulatory, Legislative, and Judicial Developments," Patent Law Symposium for Financial Institutions, Securities Industry and Financial Market Association, New York, NY, February 27, 2007
  • Annual Speaker, "Inventorship, Ownership, Assignment, Representation and Allowance," Patent Resources Group, 2001-2008
Publications
Mr. Donner has published several books and many articles, on patenting computer software and hardware-related applications. Most recent publications include:
Books
  • Patent Prosecution: Practice and Procedure Before the U.S. Patent Office, BNA, Eighth Edition, 2013
  • Constructing and Deconstructing Patents, BNA, 2010
Articles
  • "Supreme Court Holds That Isolated DNA Is Not Patent Eligible, But Complimentary DNA (cDNA) Is Patent Eligible," Bloomberg BNA, Summer 2013, Vol. V, Issue 3
  • Co-author, "Obviousness-Type Double Patenting Can Apply Without Common Ownership," Law Journal Newsletters: Intellectual Property Strategist, April 1, 2013
  • Co-author, "Patentability of Business Methods: Decoding the Federal Circuit's CLS and Bancorp Decisions," Intellectual Property & Technology Law Journal, February 2013, Vol. 25, No. 2
  • "Auditing Assets Regularly Is Vital to a Company's Health," BNA's Patent, Trademark & Copyright Journal, August 3, 2012, Vol. 84, No. 2075
  • "USPTO Amends Final Rules to Simplify Ex Parte Appeals to the Board and to Reduce Backlog," The BNA Books Monitor, April 2012
  • Co-author, "Centocor v. Abbott Labs: Must You Only Preach What You Practice?" Intellectual Property Strategist, April 2011
  • "Transforming the Machine-or-Transformation Test Under In re Bilski," The BNA Books Monitor, September 2009
  • "Trade-Offs in Defending Willful Infringement Charge," New York Law Journal, Special Section on Intellectual Property, April 23, 2007
    Admitted to Practice
    New York; District of Columbia; New Jersey
    Patent Admissions
    U.S. Patent and Trademark Office
    Education
    J.D., magna cum laude, Case Western Reserve University School of Law, 1991; Contributing Editor, Law Review
    M.S., Case Western Reserve University, Case School of Engineering, 1987; Systems Engineering
    B.S., with high honors, Case Western Reserve University, Case School of Engineering, 1985; Systems Engineering
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