Dana M. Gordon, Ph.D.

Partner, Registered Patent Attorney - Boston

Dana Gordon
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Counseling on business management of intellectual property assets, Dr. Dana Gordon advises leading universities, pharmaceutical companies, and medical device companies on strategic aspects of patent, trademark, copyright, and trade secret protection. Dana’s practice emphasizes patent portfolio strategic planning, and preparation and prosecution of U.S., international and foreign patent applications in the life sciences, including applications focused on small molecules, pharmaceuticals, synthetic methods, molecular diversity, drug discovery, polymers, materials science, and medical devices. He frequently provides clients with due diligence assessments of U.S., international, and foreign patent portfolios in connection with technology transactions and acquisitions. Dana also regularly prepares non-infringement, invalidity and clearance patent opinions in these and other areas.

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Education:

  • Yale University, Ph.D. in Organic Chemistry with Professor Samuel J. Danishefsky
  • Harvard University, Postdoctoral Fellow in Chemistry with Professor George M. Whitesides
  • Boston College Law School, J.D.
  • University of California Los Angeles, B.S. in Chemistry, magna cum laude with Departmental Highest Honors

Representative Experience

  • Longstanding management of organic chemistry-related patent portfolios for New England, midwestern and southeastern research universities
  • Advised on patent portfolio strategy for a venture-backed drug discovery start-up focused on metabolic diseases
  • Obtained a U.S. patent in the metabolic disease area triggering a $2 million milestone payment for the licensor
  • Represented a mid-Atlantic publicly traded drug discovery company in intellectual property diligence in connection with the potential acquisition of a west-coast privately held drug discovery company
  • Provided non-infringement and invalidity patent opinions in the biotechnology instrumentation and polymer synthesis sectors, respectively

Professional Experience

  • Assistant Professor (tenure track) in the Chemistry Department at Brandeis University (1994-1997)
  • Proof of Purpose: The US Utility Requirement, EUROPEAN BIOPHARMACEUTICAL REVIEW, 32-33 (Spring 2006)
  • United States: Upjohn v. Mova Pharmaceutical, PATENT WORLD 128, 18-20 (December 2000/January 2001)
  • Dana M. Gordon et al., A Type 1 Intramolecular Diels-Alder Approach to the Mniopetals: Intervention of a Thermal [1,5] Hydrogen Shift, IND. J. CHEM. 38B, 269-273 (1999)
  • Dana M. Gordon et al., Total Synthesis of Endothelin-Converting Enzyme Antagonist WS75624 B., TETRAHEDRON LETT. 9335-9338 (1998)
  • Dana M. Gordon et al., Asymmetric Synthesis of Sesaminone: Confirmation of Its Structure and Determination of Its Absolute Configuration, J. ORG. CHEM. 62, 7413-7417 (1997)
  • Dana M. Gordon et al., Design and Synthesis of Hydrogen-bonded Aggregates. Theory and Computation Applied to Three Systems Based on the Cyanuric Acid-Melamine Lattice, TETRAHEDRON 51, 607 (1995)
  • Dana M. Gordon et al., Non-Covalent Synthesis: Using Physical-Organic Chemistry to Make Aggregates, ACC. CHEM. RES. 28, 37 (1995)
  • Dana M. Gordon et al., Computational Simulations of Supramolecular Hydrogen-Bonded Aggregates: HubM3, FlexM3, and Adamantane-Based Hubs in Chloroform, J. AM. CHEM. SOC. 116, 12033 (1994)
  • Dana M. Gordon et al., Synthesis of KDO Using Indium-Mediated Allylation of 2, 3:4, 5-Di-O-isopropylidene-D-arabinose in Aqueous Media, J. ORG. CHEM. 58, 7937 (1993)
  • Dana M. Gordon et al., Tin- and the Indium-Mediated Allylations of Unprotected Carbohydrates in Aqueous Media: A Short Synthesis of Sialic Acid (Neu5Ac), J. ORG. CHEM. 58, 7937 (1993)
  • Dana M. Gordon et al., Studies in the Benzannulation of a Cycloalkynone: An Approach to the Synthesis of Antibiotics Containing the Benz[a]anthracene Core Structure, J. ORG. CHEM. 57, 7052 (1992)
  • Dana M. Gordon et al., The Synthesis of a Cyanobacterial Sulfolipid: Confirmation of Its Structure, Stereochemistry and Anti-HIV-1 Activity, J. AM. CHEM. SOC. 114, 659 (1992)
  • Dana M. Gordon et al., Introduction to the Symposium: The Origins and Evolution of Metabolic Pathways in Animals, AMER. ZOOL. 31, 477 (1991)
  • Dana M. Gordon et al., Ritter-like Reactions of 1,2-Anhydropyranose Derivatives, J. ORG. CHEM. 56, 3713 (1991)
  • Dana M. Gordon et al., Displacement Reactions of a 1,2-Anhydro-a-D-hexopyranose: Installation of Useful Functionality at the Anomeric Carbon, CARBOHYDR. RES. 206, 361 (1990)

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Honors

  • Ranked in Intellectual Property by CHAMBERS USA: AMERICA'S LEADING LAWYERS FOR BUSINESS (2008-2016)
  • Listed as a “Rising Star” in Intellectual Property Law, Super Lawyers'  Massachusetts Rising Stars: A Comprehensive Listing of the Best Young Lawyers in Massachusetts (2005-2012)
  • National Institutes of Health Postdoctoral Fellow (Harvard, 1992-1994)
  • National Science Foundation Predoctoral Fellowship (Yale, 1988-1991)
  • Awarded the 1986 Geissman Prize for Excellence in Organic Chemistry by the Department of Chemistry at UCLA

Involvement

  • American Association for the Advancement of Science, Member
  • American Bar Association, Member
  • American Chemical Society, Member
  • American Intellectual Property Law Association, Member
  • Association of University Technology Managers, Member
  • Boston Bar Association, Member
  • Boston Patent Law Association, Member
  • Intellectual Property Owners Association
  • Licensing Executives Society (LES), Member of Program Committee for Boston Chapter
  • Massachusetts Bar Association, Member
  • Worcester Comprehensive Education & Care, Board of Directors
  • Perkins School for the Blind, Member of the Corporation
  • Boston Bar Foundation, Fellow
  • Moderator, "Is Open Innovation the Savior of the Biopharmaceutical Productivity Crisis?," BioNetwork 2013 (October 2013)
  • Panelist, "IP in the CleanTech Sector", part of the Clean Energy Fellowship Program sponsored by New England Clean Energy Council (July 2009)
  • Panelist, Venture Capital & IP/Tech Transfer, Harvard Medical School (April 2007)
  • Panelist, Law School for the CFO, Emerging Enterprise Center (April 2007)
  • Moderator, RNAi: Talking Out Loud About Gene Silencing, 5th Annual Mass. High Tech BioForum (February 2007)
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Bar Admissions

  • Massachusetts

Court Admissions

  • U.S. Patent & Trademark Office (Agency)