Dinesh N. Melwani

Associate

Dinesh Melwani works with start-up and established companies to develop comprehensive patent strategies in concert with their business goals. He focuses on developing patent portfolios, securing freedom to operate for new technologies, and counseling on intellectual property strategies to maximize investment and acquisition opportunities. Mr. Melwani also studies competitor patent portfolios to counsel clients on contemplated products and potential design-arounds.

Mr. Melwani manages the U.S. and international patent portfolios for a number of clients. He has extensive experience in evaluating potential acquisitions, conducting due diligence investigations, and assisting clients develop revenue streams from licensing their technologies. Additionally, a significant portion of Mr. Melwani’s practice is devoted to patent litigation. His litigation practice includes both district court actions and interference proceedings before the U.S. Patent and Trademark Office (USPTO).

Mr. Melwani works with a variety of mechanical and electro-mechanical technologies, including those related to vehicular and heavy machinery such as internal combustion engines and exhaust systems, engine sealing devices, and compartment latches for automobiles, motorcycles, and aircrafts. He also has particular experience with medical devices that includes minimally invasive surgical instruments, implantable electrical stimulators, biopsy devices, skin treatment devices, brachytherapy devices, cardiac therapies, obesity treatments, needle guards, and respiratory treatments. Mr. Melwani frequently presents on ways medical device companies can maximize the value of their patent portfolios and has been quoted in The Gray Sheet, a widely-read publication in the medical device industry.

Highlights

• Associate editor of Finnegan's Full Disclosure newsletter.
• Adjunct professor of patent law, Howard University Law School,
  2009-present.
• Currently represents a pro bono client in his request for post-conviction relief.
• Served as a court-appointed guardian ad litem for a 12-year old child involved in a custody dispute case with child abuse allegations.
• Worked at Finnegan as a student associate, gaining patent prosecution and portfolio management experience, 2004-2006.
• Worked as patent examiner at the USPTO where he handled U.S. and international patent applications in various technologies, including closure fasteners for vehicle compartments, sealing devices for engine fluids, jewelry, and business methods, 2002-2004.

Professional Activities

• South Asian Bar Association (treasurer, D.C. Chapter, 2008)
• American Intellectual Property Law Association
• Licensing Executives Society

Select Publications

• Coauthor. "Mechanisms and Strategies for Challenging Patents at the USPTO in the Wake of the America Invents Act," Intellectual Property Today, April 2012.
• Coauthor. "How to Develop a Strong Patent Portfolio," MX Magazine, Jan. 19, 2012.
• Coauthor. "Navigating the New U.S. Patent Filing System," Manupatra Intellectual Property Reports, Dec. 2011.
• Coauthor. "Starting Up? Make Your IP Attractive to Investors," Mechanical Engineering Magazine, March 2011.
• Coauthor. "Changes to the USPTO Examiner Count System," North American South Asian Bar Association IP Newsletter, June 2010.
• Coauthor. "Patent Reform Continues to Focus on Post-Grant Challenges," North American South Asian Bar Association IP Newsletter, June 2010.