Lisa A. Karczewski

Lisa A. Karczewski is a Partner with the Chan Law Group. Ms. Karczewski focuses her practice on patent prosecution, intellectual property transactional, and intellectual property litigation. With over ten years of experience in the specialty of intellectual property law, Ms. Karczewski has successfully prepared and prosecuted numerous utility and design patent applications in the technical areas of aerospace, biomedical, energy, materials science, mechanical, and polymer chemistry, before the United States Patent and Trademark Office. Ms. Karczewski has also successfully litigated intellectual property cases in the federal courts and before various federal agencies, including the International Trade Commission (Section 337) and the Trademark Trial and Appeal Board.

Areas of Practice:

Patent Prosecution

Trademark Prosecution

Intellectual Property Litigation

Intellectual Property Transactional

Customs Seizures

Bar Admissions:

California

U.S. District Court for the Central District of California

U.S. Court of Appeals for the Federal Circuit

U.S. Patent and Trademark Office

Education:

University of the Pacific, McGeorge School of Law, J.D., Intellectual Property Law Concentration, 2000. Managing Editor and Staff Writer, McGeorge Law Review.

Michigan State University, B.S. Biological Sciences/Environmental Science, 1992. State of Michigan Competitive Scholarship.

Representative Publications:

Comment, Biotechnological Gene Patent Applications: The Implications of the USPTO Written Description Requirement Guidelines on the Biotechnology Industry, 31 MCGEORGE L. REV. 1043 (2000), reprinted in 33 INTELL. PROP. L. REV. 187 (2001).

Michael J. Borrelli , Diane M. Stafford, Lisa A. Karczewski, Cynthia M. Rausch, Yong J. Lee, Peter M. Corry, Thermotolerance Expression in Mitotic CHO Cells Without Increased Translation of Heat Shock Proteins, J. CELL. PHYSIOL. 169:420-428 (1996).

Representative Intellectual Property Matters:

Successfully prepared and prosecuted numerous utility and design patent applications before the U.S. Patent and Trademark Office. Exemplary utility patent applications include: Stent with Non-Linear Links and Method of Use, USPN 6,635,083; Hybrid Intravascular Stent, USPN 6,866,805; Multilayer Stent, USPN 6,623,520; Platelet Inhibitor Eluting Ablation Catheter, USPN 6,755,824; Drug-Eluting Stent and Delivery System with Tapered Stent in Shoulder Region, USPN 7,156,869; Joint Support and Subchondral Support System, Publication Application No. US 20100145451; Process for Treating Bituminous Coal by Removing Volatile Components, Publication Application No. US 20110011719; Process for Treating Agglomerating Coal by Removing Volatile Components, Publication Application No. US 20110011720; Process for Treating Coal by Removing Volatile Components, Publication Application No. US 20110011722.

Amini Innovation Corp. v. Anthony California, Inc., et al., 2007-1182 (Fed. Cir. 2007).

Successfully represented East West Bank before the Trademark Trial and Appeal Board in cancelling the registered mark BRIDGELOAN.COM. East West Bank v. BridgeLoan Investors, Inc., Cancellation No. 92047561 (TTAB 2008).

Successfully represented Otto International, Inc. before the Trademark Trial and Appeal Board in sustaining client’s opposition of applicant’s OTTO KERN and design mark before the Trademark Trial and Appeal Board. Otto International, Inc. v. Otto Kern GmbH, Opposition No. 91170126 (TTAB 2009). Opposing Counsel: Alston & Bird, LLP.

Prior Work Experience:

MacMillan Sobanski & Todd LLC, Associate Attorney, 2009-2010.

Chan Law Group LLP, Associate Attorney, 2004-2009.

Fulwider Patton LLP, Associate Attorney, 2000-2003.

NASA Jet Propulsion Laboratory, California Institute of Technology, Office of Patents & New Technology, Law Clerk, 1999.

William Beaumont Hospital, Research Institute, Research Assistant, 1994-1997.

Tulane University Medical Center, Endocrine Polypeptide & Cancer Institute, Tulane University School of Medicine, Medical Research Technician, 1993-1994.

Honors and Awards:

Marquis Who’s Who In America, Who’s Who of American Women, and Who’s Who of Emerging Leaders

Professional Associations and Memberships:

American Intellectual Property Law Association (Biotechnology, Chemical, and PCT Issues Committees)

Los Angeles Intellectual Property Law Association

Southern California Biomedical Council

State Bar of California (Section on Intellectual Property Law: Patent Standing Committee; Liaison to Executive Committee, New Matter Editorial Board, Articles Editor, Acquisitions Editor, New Matter journal)

Representative Speaking Engagement:

Speaker, Southern California Biomedical Council, 2007 Life Sciences IP Law Symposium, “Securing Freedom To Operate For Research Activities: The Merck KGgA v. Integra Case”, Los Angeles, CA, April 26, 2007.