Our Professionals
Juan Carlos A. Marquez
Attorney-at-law
Owner/CEO
Juan Carlos A. Marquez
Attorney-at-law
Owner.CEO
Mr. Marquez has been in practice for 24 years focusing on counseling U.S. and international clients on intellectual property licensing agreements and negotiations, patent prosecution, patent validity and infringement opinions and technology transfer. Mr. Marquez has an extensive background in preparing and prosecuting patent applications worldwide in a wide variety of technological arts, in drafting patentability, validity, infringement and right-to-use opinions, and in supporting IP litigation and licensing matters. He has drafted and prosecuted patent applications in a wide variety of technological arts.
Mr. Marquez regularly counsels clients on patent and trademark procurement, validity, infringement, licensing and other intellectual property business-related issues. He has represented Taiwanese companies, such as Ritek Corp., Arcadyan Technology Corp., Prodisc Technology Inc. and Patent Wireless Corp., in settlement negotiations to avoid litigation in the US. He has also represented Taiwanese clients, such as Kingpak Technology Inc., before the U.S. Customs Service in import exclusion proceedings.
Mr. Marquez was the US vice-chair for five years and then the chairman for two years of the Intellectual Property Committee of the Inter-Pacific Bar Association. He is also a member of the American Intellectual Property Law Association, the National Association of Patent Practitioners and the Licensing Executive Society.
Mr. Marquez has also lectured and continues to lecture on various intellectual property-related issues to various firms, companies, organizations and other forums in Japan, South Korea and Taiwan, including:
- “Claim Construction in U.S. Patent Practice”, Taiwan Intellectual Property Training Academy (October 2016)
- “How to respond to USPTO Office Actions” (October 2016)
- “New Directions in U.S. Patent Practice” (April 2016)
- “ALICE Case and Its Impact on US Practice” (April 2016)
- “USPTO Inter Partes Dispute Proceedings (October 2015)
- “U.S. Intellectual Property Policies on Healthcare and Medical Device Innovations” (April 2015)
- “Current Situation and Trends of Non-Practicing Entities (NPEs) in the U.S.”, Korean Patent Attorney Association (November 2013)
- “U.S. Trademark Registration Practices: Determining and Establishing Actual Use in Commerce”, Korean Patent Attorney Association (November 2013)
- “U.S. Patent Litigation”, National Taiwan University of Science and Technology (November 2013)
- “U.S. Patent Filing and Licensing Strategies in an A.I.A. World” (October 2012)
Before entering the legal profession, Mr. Marquez was a project engineer with the Advanced Displays and Instrumentation Group, Delco Electronics Division of the General Motors (GM) Corporation.
Education
- Georgetown University Law Center (J.D.)
- Kettering University (B.S.E.E.)
Admissions
- Court of Appeals for the Federal Circuit
- District of Columbia
- Pennsylvania
- U.S. Patent and Trademark Office
Practice Areas
- Patent Counseling, Preparation, and
- Prosecution
- Patent Infringement and Invalidity
- Opinions
- Intellectual Property Due Diligence
- Licensing and IP Transactions
- Litigation Support
- Trademark Counseling, Preparation, and
- Prosecution
Technical Areas of Emphasis
- Semiconductor Structures & Processing
- Electronics & Electrical Circuits
- Flat Panel Displays
- Data Storage Components & Networks
- Automotive Components
- Industrial Materials Processing
- Laser-based Optical Systems
- Complex Mechanical Devices
- Software & Business Methods
Lily Niu
IP Manager
Patent Engineer
Lily Niu
IP Manager
Patent Engineer
Ms. Niu’s experience is concentrated on Intellectual Property. She has over 25 years of experience in the intellectual property field, and is responsible for directing and coordinating communications with numerous clients from Asia. Her role is to serve as a primary contact point for clients in order to interface the project needs and requirements of the clients who benefit from her fluency in English and Chinese, as well as her experience at the interface between Chinese and U.S. intellectual property law. On all U.S. cases, she supports Mr. Marquez, who is a registered attorney with the U.S. Patent and Trademark Office (USPTO).
Ms. Niu manages international patent and trademark filing, prosecution and maintenance. Her responsibilities include aiding in the preparation and review of patent and trademark applications, responses, amendments and other formal communications with the USPTO, supervising intellectual property staff and client correspondence.
Ms. Niu was a computer programmer analyst before she entered the intellectual property field. She was a patent engineer with the Union Chemical Laboratories (UCL), Industrial Technology Research Institute (ITRI) from 1991 to 1997. Her experience in that capacity included aiding in preparing and prosecuting patent applications in the US, Europe and throughout Asia, interfacing with inventors and foreign patent attorneys, and lecturing on patent claims drafting. Ms. Niu has attended and completed formal training programs in patent and trademark prosecution, including those administered by the USPTO, and the American Intellectual Property Law Association.
Education
- George Washington University, B.A.
- Montgomery College, A.A. (Computer Science)
Practice Areas
- Patent Preparation and Prosecution
- Trademark Preparation and Prosecution
- Client Development and Support
Additional Languages
- Chinese
Daniel J. Stanger
Attorney-at-law
Of Counsel
Daniel J. Stanger
Attorney-at-law
Of Counsel
Mr. Stanger has 28 years of experience as a patent attorney and advises clients from individual inventors to multinational corporations in a variety of patent law matters, including inventor counseling, patent application drafting and prosecution, patentability, infringement and invalidity in a variety of technology fields. Mr. Stanger also assists individual inventors and small businesses in their intellectual property portfolio planning and management.
For more than 20 years, Mr. Stanger has conducted in-house training of foreign nationals in U.S. patent practice and preparation for the USPTO registration examination. He has also lectured to audiences in the United States, Japan, and Vietnam on various topics of U.S. patent law, including:
- “Revisiting the Duty of Disclosure and Nature of Inequitable Conduct After Therasense v. Becton, Dickinson & Co.”
- “Key Provisions of the America Invents Act - Declarations and First-Inventor-To-File”
- “Early Statistical Overview of USPTO Proceedings Under the America Invents Act”
Education
- The George Washington University National Law Center (now The George Washington University Law School) (J.D.)
- University of Illinois (B.S., Physics)
Admissions
- Court of Appeals for the Federal Circuit
- Virginia
- U. S. Patent and Trademark Office
Practice Areas
- Patent Counseling, Preparation, and Prosecution
- Patentability, Infringement, and Invalidity Opinions
- Trademark Counseling, Preparation, and Prosecution
- Intellectual Property Portfolio Planning and Management
Technical Areas of Emphasis
- Semiconductor Structures & Processing
- Electrical and Electro-Optic Devices
- Vacuum Switchgears
- Gas Turbines
- Software & Business Methods
- Network Storage Systems
- Targeted Advertising
- Virtual and Augmented Reality
- Gaming Systems
Colin Chiu
Attorney-at-law
Of Counsel
Colin Chiu
Attorney-at-law
Of Counsel
Mr. Chiu’s practice focuses on counseling Asian clients on intellectual property licensing agreements and negotiations, patent prosecution, patent validity and infringement opinions, and patent mapping and portfolio management. Mr. Chiu has an extensive experience in preparing and prosecuting patent applications world-wide in a wide variety of technological arts, in counseling clients on intellectual property right protection and enforcement strategies, and in supporting IP litigation matters. He also consults clients in cross-border business transactions, including technology transfer, merger & acquisition and arbitration.
Mr. Chiu is an adjunct professor at several universities in Taiwan, teaching legal writing, patent prosecution and litigation practice. He’s also an active lecturer, topics including:
- “Planning for 2017 – Hot IP Issues and Other Salient Legal Topics for the New Year,” panelist (Jan 2017)
- “Innovation Leadership Forum for DOST Supervisors”, ITRI (Jan 2016)
- “Forum Selection in Hatch-Waxman Actions”, Annual Tech Law Seminar (Nov 2015)
- “Strategic Planning for International Patent Prosecution”, NCHU (Oct 2015)
- “Intellectual Property and Software Protection”, NTU (Jun 2015)
Mr. Chiu was a software engineer before entering law practice. He continues to participate in open source software related activities. Mr. Chiu is fluent in English, Chinese and Taiwanese.
Education
- Washington University in St. Louis (J.D.)
- University of New Hampshire (formerly Franklin Pierce Law Center) (M.I.P.)
- National Taiwan University
- (B.S. Management Information Systems)
Admissions
- New York
- District of Columbia
Practice Areas
- Patent Counseling, Preparation, and Prosecution
- Patent Infringement and Invalidity Opinions
- Intellectual Property Due Diligence
- Licensing and IP Transactions
Technical Areas of Expertise
- Semiconductor Structures & Processing
- Internet Technology
- Medical Devices
- Smart Vehicles
- Green Technology
- Complex Mechanical Devices
- Software & Business Methods
Nanda Kumar
Attorney-at-law
Of Counsel
Nanda P.B.A. Kumar, J.D., Ph.D.
Attorney-at-law
Of Counsel
Bar Admissions
- Pennsylvania
- New Jersey
- U.S. Patent and Trademark Office
Admissions
- Court of Appeals for the Federal Circuit
- Virginia
- U. S. Patent and Trademark Office
Legal Education
- 2000 J.D., Temple University School of Law
Court Admissions
- All State Courts - Pennsylvania
- All State Courts - New Jersey
- U.S. District Court - Eastern District of Pennsylvania
- U.S. District Court - District of New Jersey
Graduate Education
1989 Ph.D., University of Delhi, India
1982 M.Sc., Andhra University, India
Overview
Dr. Nanda Kumar is a very pragmatic, business-savvy and detail-oriented lawyer with a particular focus on intellectual property (IP) and life sciences practice. As a patent and life sciences lawyer, Nanda draws on his legal and scientific background to strategically navigate the dynamic area at the intersection of law and science. He is well versed in a wide variety of matters in the pharmaceutical, biotech, and chemical industries. Nanda has over 20 years of experience representing domestic and foreign companies and R&D / academic institutions at all stages of the IP and life sciences business lifecycle. Through this broad experience he has gained a unique ability to effectively integrate clients’ interests and a business perspective into his law practice.
Practice Focus
Patent Prosecution and analysis: Strategic assistance for building IP assets and managing complex patent portfolios including the preparation, filing and prosecution of patent applications related to small molecule and chemistry, formulations, nucleic acids, gene therapy, vaccines, protein-protein interactions, nanoparticle technology, immunotherapy and diagnostic agents. Provide patent analysis and opinions related to inventorship, patentability, IP due diligence, infringement and validity, and freedom-to-operate reviews. Assist clients with IP and regulatory issues in the context of Orange Book listing and Hatch-Waxman Amendments to the Federal Food, Drug & Cosmetic Act.
Patent Litigation: Assist in patent infringement litigation related to pharmaceutical, chemical and biotechnology industries.
IP and Life Sciences Transactions: Assist clients in structuring and negotiating confidentiality agreements, license agreements, consulting and non-compete agreements, product development and commercialization agreements, supply agreements and asset purchase agreements.
Trademark Prosecution and Portfolio Management: We recognize and appreciate that the life sciences inventions of today are the drug products of tomorrow, and that those products must be effectively marketed for our clients to reap the rewards they deserve for their investments. Therefore, protection of our clients’ intellectual property rights does not begin and end with patents. Trademark prosecution, licensing and portfolio management are an integral part of our overall practice and, consequently, we dedicate a significant portion of our time assisting clients with trademark matters.
Employment History
2015 Law Offices of Nanda P.B.A Kumar, LLC, Princeton, New Jersey
1999 Reed Smith LLP, Philadelphia (Partner from January 2007 – August 2015)
1997 Dechert LLP, Princeton, New Jersey (Law Clerk)
1996 NovaFlora, Inc., Philadelphia - Senior Scientist
1995 Phytotech, Inc., New Jersey - Research Scientist
1992 Center for Agricultural Molecular Biology, Rutgers University, New Jersey - Post Doctoral Fellowship
1990 Tata Energy Research Institute, New Delhi, India - Post-Doctoral Fellowship
1989 Biotechnology Center of Indian Agricultural Research Institute, New Delhi, India - Post-Doctoral Fellowship
Technical Background
Prior to entering the field of law, Dr. Kumar held Senior Scientist research positions in the U.S. industry and was a Post-Doctoral Research Fellow at The Center for Agricultural Molecular Biology, Rutgers University; The Biotechnology Center of Indian Agricultural Research Institute; and The Tata Energy Research Institute. His scientific background focused primarily on biology, biochemistry, genetics, biotechnology and molecular biology.
Activities
- Contributing Author, Black’s Law Dictionary, Abridged Eighth Edition, 2005
- "Key IP Issues related to Open Innovation Collaboration," Speaker BioJapan 2007, Yokohama, Sept. 19-21, 2007
- "Potential IP-Related Obstacles As Adult Stem Cell Therapies Progress Toward The Market," speaker and panel discussion moderator, Phacilitate Cell & Gene Therapy Forum 2007, Baltimore, Jan. 22-24, 2007
- "Intellectual Property Rights and Due Diligence," BioAsia 2005, Hyderabad, India, Feb. 10-12, 2005
- "Patents and Patenting Biotech Inventions in the U.S.," International Conference on Innovation & Intellectual Property Rights Strategy, Hyderabad, India, Sept. 12-13, 2002
- "Drug Development Collaboration Agreements – Intellectual Property Considerations," BioAsia 2008, Hyderabad, India, Feb. 7-9, 2008
- “Drug Products Based on Small Molecules and Biologics – Exclusivity Incentives,” Pharma Legal & Compliance Summit 2013, Mumbai, India, September 27, 2013
- Recipient of "Leadership Excellence in the Law Award 2014" conferred by the Pennsylvania Diversity Council. The award recognizes attorneys in the greater Philadelphia region who have demonstrated outstanding leadership, resolve, and achievements for the benefit of their clients and communities
- “USFDA Compliance Issues: Backup Strategy” in Keynote Session: Demystifying Compliance, Pharma Legal & Compliance Summit 2015, Mumbai, India, October 16, 2015
- “Section 101 and Its Implications on Biotechnology and Pharmaceuticals” panel session moderator, World Intellectual Property Forum, November 14-16, 2018, New Delhi.
- “Invalidity issues explored by pharmaceutical patent type,” presentation in a seminar series on WINNING U.S. PHARMACEUTICAL PATENT ACTIONS AND PTAB PROCEEDINGS by Maynard Cooper & Gale in India, February 4-8, 2019.
Other Activities
- Director, Pharm Ops, Pharm Ops, Inc., 101- N. Broad Street, Phillipsburg, NJ 08865