Lawyers & Advisors
Alan S. Nadel is experienced in all aspects of patent matters involving bioscience, chemical and mechanical inventions, including patent preparation, prosecution, licensing and litigation. Specific exemplary high-technology fields include biotechnology, human and veterinary pharmaceuticals, nutritional products, inorganic and organic chemistry products and processes, semiconductor wafer processing products and processes, and environmental remediation systems. Other areas include heat exchange systems, water treatment systems, paper making technology, sporting goods and toys.
Mr. Nadel's biotechnology patent work has included preparing and prosecuting diverse types of domestic and foreign patent applications relating to human, animal, plant, microbial and biopesticidal genes and proteins, as well as DNA- and peptide-derived products and methods of treatment. His clients include corporate clients of all sizes (from start-ups to Fortune 100 companies), domestic and foreign academic and research institutions, and individual physicians and other researchers.
A patent attorney, Mr. Nadel has been registered to practice before the U.S. Patent and Trademark Office for more than 30 years. His practice includes negotiating, advising with respect to and preparing licenses and technology transfer agreements and other agreements associated with technology practice, such as trade secret and consulting agreements. He has negotiated and prepared licenses involving pharmaceuticals, diagnostic products, veterinary products, nutritional supplements and various other technologies. He also has been involved in investigations concerning due diligence relating to acquisition or other transfers of intellectual property, typically associated with mergers and acquisitions; preparation and prosecution of U.S. and foreign patents; enforcement of patents; defense of clients accused of infringing patent rights of others; and counseling clients in other diverse intellectual property matters.
Mr. Nadel was a member of the Business Advisory Team of the University City Science Center Port of Technology, which advised start-up companies about business, technology, intellectual property and marketing issues, and has been credited with guiding companies from the initial phase of establishment to becoming commercially successful public companies.
Prior to being a founding partner of Panitch Schwarze Belisario & Nadel, he was a partner with Akin Gump Strauss Hauer & Feld, and before that, Mr. Nadel was a founding partner of Panitch Schwarze Jacobs & Nadel, P.C. Before founding that firm, he was a patent attorney and partner at another Philadelphia intellectual property law firm. Previously, he was a biochemist at the National Institutes of Health.
Mr. Nadel was president (2001-2002), president-elect (2000-2001), vice president (1999-2000) and treasurer (1997-1999), and a member of the board of governors (1995-1997) of the Philadelphia Intellectual Property Law Association, and chaired its Federal Practice and Procedures Committee for several years. In addition, he is a member of the American Intellectual Property Law Association, the Intellectual Property Law Section of the American Bar Association and the Philadelphia Bar Association. He is also a volunteer lawyer with the Philadelphia Volunteer Lawyers for the Arts.
For several years, Mr. Nadel was a vice-president and member of the board of directors of the George Washington University Alumni Association. He also serves on the National Council of Arts and Sciences, which advises the dean of the Columbian College of Arts and Sciences of the George Washington University. Mr. Nadel was also the president of Congregation Adath Jeshurun, in Elkins Park, Pennsylvania, from 2000 to 2002.
Mr. Nadel received his B.S. in chemistry in 1971 1976 from The George Washington University and his J.D. with honors in 1976 from The George Washington University Law School.
Honors and Awards
Mr. Nadel has maintained the prestigious AV® Preeminent Peer Review Rating from Martindale-Hubbell since 1988. This AV rating signifies the highest rating available to any individual attorney from Martindale-Hubbell and is a testament to the fact that he is ranked at the highest level of skill, integrity and overall professional excellence by his peers. Mr. Nadel has also been selected to The Best Lawyers in America in every edition since 2006, has been listed in
Chambers USA: America's Leading Business Lawyers since inception of the publication in 2003 to date, and was named in every survey of his peers as a Pennsylvania "Super Lawyer" since 2004.
Mr. Nadel has published and lectured extensively on patent matters. Some of his recent articles and speaking engagements include the following:
Publications and Presentations
“Copyright, Trademark and Other Intellectual Property Law;” lecture on patent law topics at LawReview CLE seminars; Philadelphia, PA; March 31 and July 28, 2011.
“Hedging on the Scope of Patentable Subject Matter - The Potential Broader Implications of In re Bilski”; co-authored with Bijal Shah-Creamer; Twenty-Fourth Annual Joint Patent Practice Seminar of the Connecticut, New Jersey, New York and Philadelphia Intellectual Property Law Associations; pp. 1-8; April 30, 2009; reprinted in Spring 2009 Newsletter of the Philadelphia Intellectual Property Law Association, pp. 1-5.
“Willful Infringement in View of In re Seagate Technology, LLC;” co-authored with Y.J. Kim, Chapter 24, pp. 749-762 of the Pennsylvania Bar Institute 3rd Annual Intellectual Property Law Institute, presented in Philadelphia March 6, 2009 and in Pittsburgh April 28, 2009.
“Federal Circuit Year in Review - Patent Prosecution and Licensing, May 1, 2007 – April 30, 2008;” PowerPoint® slide presentation; co-authored with Y. Jae Kim; presented at annual meeting of the Philadelphia Intellectual Property Law Association; May 15, 2008.
“Inequitable Conduct: McKesson v. Bridge Medical, eSpeed v. Brokertec, and
SEL v. Samsung;” Twenty-Fourth Annual Joint Patent Practice Seminar of the Connecticut, New Jersey, New York and Philadelphia Intellectual Property Law Associations; April 30, 2008.
“United States Provisional Patent Rights;” PowerPoint® slide presentation; Spring meeting of the American Intellectual Property Law Association; May 11, 2005.
“PCT Update: New Since April 2004;” Twenty-First Annual Joint Patent Practice Seminar of the Connecticut, New Jersey, New York and Philadelphia Intellectual Property Law Associations; April 21, 2005.
“Reissue Practice: Keep Your Eyes on the Claims;” Fifteenth Annual Joint Patent Practice Seminar of the Connecticut, New Jersey, New York and Philadelphia Intellectual Property Law Associations; April 20, 1999.
“Changes to U.S. Patent Law: The GATT Amendments to 35 U.S.C. § 271;” Twelfth Annual Joint Patent Practice Seminar of the Connecticut, New Jersey, New York and Philadelphia Intellectual Property Law Associations; April 17, 1996.
"Cardinal Chemical Co. v.
Morton International, Inc. and its Impact;” Tenth Annual Joint Patent Practice Seminar of the Connecticut, New Jersey, New York and Philadelphia Intellectual Property Law Associations; April 26, 1994.
“Effective Use of Requests for Admission Under Rule 36;” Sixth Annual, Joint Patent Practice Seminar of the Connecticut, New Jersey, New York and Philadelphia Intellectual Property Law Associations; May 1, 1990.
“Protecting Your Intellectual Property Under Pennsylvania Law”; course book co-authored with Roberta Jacobs-Meadway, prepared in conjunction with The Cambridge Institute, Vienna, Virginia and presented on September 16, 1988, and September 26, 1989, in Philadelphia, Pennsylvania and on September 23, 1989, in Pittsburgh, Pennsylvania.
“Underused Requests for Admission;” presented to the Philadelphia Patent Law Association; November 17, 1988.
“Secondary Considerations and the Level of Skill in the Art: What is the Evidence and What Makes it Persuasive?” Fundamentals of Intellectual Property Law Practice Before Agencies, Courts and in Corporations, American Bar Association Section of Patent, Trademark and Copyright Law, p. 99; March 19, 1987.
“Availability of References and Novelty in the CAFC - November 1984 to Date;” presented to the Philadelphia Patent Law Association; May 22, 1986.
“Joint Inventorship Under Amended 35 U.S.C. § 116;” First Annual Joint Patent Practice Seminar of the Connecticut, New Jersey, New York and Philadelphia Intellectual Property Law Associations; May 7, 1985.
“Discovery in Patents: Interrogatories, Depositions, Document Production, Protective Orders and Admissions,” presented at the A. William Deller Intellectual Property Seminar; May 21, 1982.
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Third Party Endorsement Letters
BioNumerik Pharmaceuticals, Inc.
Brentwood Industries Inc.
Mars Fishcare North America, Inc.