JOSHUA B. GOLDBERG is Co-Managing Partner and Partner-in-Charge of the Chemical, Pharmaceutical and Biotechnology Department of Nath, Goldberg & Meyer (NGM). Mr. Goldberg’s practice involves portfolio management and analysis, including worldwide patent portfolio development and acquisition across a wide range of technology areas, conducting reexamination, reissue, and post-grant review proceedings, obtaining patent term extensions, conducting Paragraph IV analysis, preparing patentability, freedom to operate, non-infringement, and validity opinions and positions, pre-litigation analysis and client counseling, patent portfolio valuation, and conducting licensing negotiations.

Practice Areas

Mr. Goldberg’s practice areas include:

• Patent Estate Development, both in the U.S. and Internationally
• U.S. and International Patent Application Drafting and Prosecution for Chemical, Pharmaceutical, and Biotechnology Innovations
• Technology Evaluation and Positioning
• Legal and Scientific Research and Analysis regarding Patentability, Patent Validity, Enforceability, and Freedom to Operate
• Licensing, Acquisitions, Divestitures, and Joint Ventures
• The Preparation, Filing, and Management of various post-grant proceedings, including reexaminations, reissues, post grant reviews, and oppositions

Professional Profile

Mr. Goldberg received his practical scientific experience while performing research and development for Particle & Coating Technologies, Inc. During this stage of his career, Mr. Goldberg was responsible for the development, design, and experimental creation of various pharmaceutical delivery systems.

While in law school, Mr. Goldberg commenced his career in Intellectual Property law as a law clerk at NGM. Mr. Goldberg earned his U.S. Patent and Trademark Office Registration Number in 1998, was admitted to the Bar of the Commonwealth of Virginia in 1999, and was admitted to the Bar of the District of Columbia in 2005.

Mr. Goldberg has been actively practicing patent law at NGM since 1997. He has prepared and prosecuted countless patent applications for both international and domestic clients in a wide variety of technology areas. His current practice places an emphasis on the chemical, pharmaceutical, biotechnology, and mechanical art areas, with a particular focus on agricultural and renewable energy technologies. Accordingly, Mr. Goldberg is at times known as The Green Patent Guy. He also advises corporate, university, and independent clients in such areas as the development of offensive and defensive patent portfolios, creation of world-wide patent estates, the preparation of patent enforceability and invalidity opinions, and in freedom to operate searches and analysis.

Mr. Goldberg has prepared speeches and lectured on a wide variety of topics, including Overcoming Section 101 Rejections for Extracts and Natural Products; Last Chance for Plausibility; Patent Portfolio Development for Licensing and Monetization; What Every Investor or CEO Needs to Know About Intellectual Property; Written Description and Claim Interpretation of Ranges and Numerical Values – Recent Federal Circuit Guidance; Clinical Trial Strategies and Patenting: Is There Any Convergence?; Deal Killers in Healthcare/Biotech Licensing; Pre-Licensing Considerations; Post License Issues; and Presentation on Patents & Patent Searching. He is a frequent lecturer at various Universities, corporate clients, technology incubators and accelerators, and professional organizations, and often presents to groups of start-ups and independent inventors.

Mr. Goldberg has authored or co-authored several publications entitled: “The Current Status of the Inherency Doctrine to Meet the Written Description Requirement for Negative Claim Limitations in the United States“, “Yes, It is Possible to Get A Patent on Your Cannabis-Related Invention”, “Patenting Your Cannabis Strain:, “How Double-Patenting Rejections May Further Raise the Bar for Applicants”; “Eli Lilly v. Barr Labs: Is a New Use of an Old Compound No Longer Patentable?”; and “New Patent Application Filing Strategy-Why Companies Should Be Filing Their First Patent Application as a Provisional”.

Mr. Goldberg is a member of the American Intellectual Property Law Association (AIPLA), Vice Chair of the Chemical Practice Committee of AIPLA, an Editor of AIPLA’s Chemical Practice Chronicles, the Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI), Vice Chair of AIPPI-US, the International Trademark Association (INTA), the U.S. Patent Office’s Chemical and Biotechnology Customer Partnership, and other professional organizations.

Mr. Goldberg received his J.D. degree from The George Washington University (1999) and his B.S. degree in Chemical Engineering with a minor in Environmental Engineering from Washington University in St. Louis (1996). Mr. Goldberg is registered to practice before the U.S. Patent and Trademark Office and is admitted to practice before the Bars of the Commonwealth of Virginia and the District of Columbia.