Leslie I. Bookoff

Partner

Les Bookoff is involved with most aspects of patent-related work with an emphasis on the medical device field. He provides a full range of patent services to clients with a particular focus on developing patent strategies in concert with the client's business goals. He has considerable experience building and managing patent portfolios, from start-ups to larger companies.

Mr. Bookoff analyzes patent portfolios of competitors to counsel clients regarding acquisition of technology, licensing, contemplated products, and potential design-around options. He studies competitor products to advise clients on enforcement of their patent portfolios and often prepares validity, infringement, patentability, and clearance opinions. He represents clients in due diligence investigations during investment transactions and prepares and prosecutes foreign and domestic patent applications, including practice according to the Patent Cooperation Treaty. Mr. Bookoff also has considerable experience in U.S. district court litigation and U.S. Patent and Trademark Office interference proceedings.

Mr. Bookoff's technical experience extends to diverse technologies in the mechanical and electro-mechanical fields with a particular emphasis on medical device technologies, including catheters, endoscopic and urologic devices, implants for treatment of heart-related ailments, biopsy instruments, neurological implants, spine treatments, and blood testing devices. His knowledge of medical device technology and the importance of patent protection in that field are well established. He regularly presents at meetings of the Medical Device Manufacturers Association and Medical Product Outsourcing and is frequently quoted in The Gray Sheet, a significant publication in the medical device community.

Highlights

• For over nine years directed the patent strategy for a small medical device company developing novel therapies for mitral regurgitation and left ventricular dysfunction; work included growing a worldwide portfolio of over 100 patents and patent applications, and representing the company in patent interferences and in due diligence investigations during investment transactions.
• Handled the patent work for a company that developed a drug coated balloon catheter, from the company's inception as a start-up to its recent purchase four years later for over $300 million.
• Represented a large public company in the investigation of IP issues central to a $2 billion purchase of a medical device company; work included overseeing a study of over 1000 patents in a clearance analysis of the company's products and a study of the company's patent coverage for its products to advise upper management of risks associated with its purchase.
• Served as a member of the firm's management committee, 2009-2011; and chair of the firm's mechanical practice group, 2006-2009.

Professional Recognition

• Consistently recognized by The Legal 500 United States in patent prosecution for utility and design since 2007, and as a leading lawyer, 2008-2009.

Professional Activities

• American Intellectual Property Law Association
• Licensing Executives Society

Select Publications

• 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.
• "Building IP Assets and Implementing Strategies for the Future," China IP News, Aug. 2008.
• "Patent Rule Changes: Preparing a Medtech Portfolio," Law360, Jan. 4, 2007.
• "Patent Rule Changes: Preparing a Medtech Portfolio," Medical Device Link, Sept. 18, 2006.