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Biography

Les Bookoff has provided a full range of patent counseling services to clients for almost 25 years. He is recognized as a leader in patent prosecution, portfolio management, and strategic patent counseling. The Legal 500 US describes Les as having “the rare combination of well-honed legal acumen and experience-driven business savvy that makes him a go-to guy for intellectual property matters.” IAM Patent 1000 also has recommended Les, describing him as “prompt, creative, strategic, and professional,” adding, “Bookoff is a master at tailoring advice and services precisely to the needs of the recipient and has all the qualities you could want in your outside counsel.” Clients noted to that publication that “[y]ou can go about your job with confidence, knowing that your IP portfolio is under his excellent stewardship.”

Les represents Fortune 500 companies, startups, universities, and venture capitalists. He analyzes patent portfolios of competitors to counsel clients on risk management, acquisition of technology, licensing, freedom-to-operate of contemplated products, and design-around options. He studies competitor products to advise clients on strategic prosecution and enforcement of their patent portfolios. Les also has represented companies and investors in scores of due diligence investigations during investment transactions, mergers, and acquisitions.

In managing the patent portfolios for companies over the past 20 plus years, Les has obtained thousands of patents worldwide. His considerable experience in patent litigation and post-grant proceedings helps to obtain patents that withstand the rigors of enforcement and competitive scrutiny.

Les’s experience extends to diverse technologies, including the internet, consumer products, medical devices, healthcare IT, software, food industry, and industrial machinery and manufacturing. His practice has a particular emphasis on medical devices, having worked with companies in virtually every major medical device field. He regularly presents at medical device industry meetings and publishes on patent topics relevant to the industry.

Prior to co-founding Bookoff McAndrews, Les practiced patent law for 19 years at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, where he was a partner and served various management roles.

Highlights

  • Handled the patent strategy for a startup that developed a drug coated balloon catheter, from the company’s inception to its purchase four years later for over US$300m; work included building an international patent portfolio and handling the due diligence during several investment rounds and acquisition.
  • Represented a large public company in its investigation of IP issues central to a US$2bn purchase of a medical device company; work included overseeing a study of over 1,000 patents in a clearance analysis of the company’s products and a study of the company’s patent coverage for its products to advise upper management of risks associated with its purchase.
  • For over twenty years, has provided a full range of patent counseling services to a Fortune 500 medical device company, including managing a portfolio of hundreds of patent applications worldwide, leading patent interference proceedings, performing dozens of due diligence investigations of potential investments and acquisitions, providing freedom-to-operate counsel, drafting transactional agreements, and litigating in U.S. district courts.
  • For one of the largest dairy companies in the United States, has provided strategic guidance and legal opinions relating to a competitor’s assertion of patents for manufacturing equipment.

Bar Admissions

  • District of Columbia
  • Maryland
  • U.S. Patent and Trademark Office

Education

  • University of Pennsylvania Law School J.D., cum laude, 1993
  • University of Maryland B.S., Mechanical Engineering, summa cum laude, 1990

Professional Recognition

  • Recognized by LMG Life Sciences as a finalist for “Patent Strategy & Management Attorney of the Year – District of Columbia”, 2018
  • Recognized by Managing Intellectual Property as a “Patent Star” for Patent Prosecution, 2016-2018.
  • Recognized by IAM Patent 1000 as a “Leading Patent Professional” for Patent Prosecution, 2015-2018.
  • Recognized by LMG Life Sciences as a “Star” for Intellectual Property, Patent Prosecution, and Patent Strategy & Management, 2017-2018.
  • Consistently recognized by The Legal 500 United States in patent prosecution for utility and design since 2007, and as a leading lawyer, 2008-2009.

Publications

  • Author. “Lessons from Williamson v. Citrix Online,” BoMc Blog, August 17, 2015.
  • Author. “Lessons from Pacing v. Garmin,” BoMc Blog, February 2, 2015.
  • Coauthor. “Extending a Patent’s Term to Protect Your Market Share,” The Gray Sheet, January 1, 2015.
  • Coauthor. “Bridging Points Of Contention In University Tech Transfer,” Law360, June 24, 2014.
  • Coauthor. “Should Applicants Include Definitions in Patent Apps?” Law360, May 5, 2014.
  • Coauthor. “How Patent Procedures Will Change Under Patent Law Treaty,” Law360, November 15, 2013.
  • Coauthor. “Startup Patent Filing Strategies After the AIA,” Law360, January 7, 2013.
  • Coauthor. “The Role of IP in Medical Device Investments,” Law360, June 26, 2012.
  • Coauthor. “How to Develop a Strong Patent Portfolio,” MX Magazine, January 19, 2012.
  • Coauthor. “Navigating the New U.S. Patent Filing System,” Manupatra Intellectual Property Reports, Dec. 2011.
  • Coauthor. “Starting Up? Make Your IP Attractive to Investors,” Mechanical Engineering Magazine, March 2011.
  • Coauthor. “Changes to the USPTO Examiner Count System,” North American South Asian Bar Association IP Newsletter, June 2010.
  • Coauthor. “Patent Reform Continues to Focus on Post-Grant Challenges,” North American South Asian Bar Association IP Newsletter, June 2010.
  • “Building IP Assets and Implementing Strategies for the Future,” China IP News, August 2008.
  • “Patent Rule Changes: Preparing a Medtech Portfolio,” Law360, January 4, 2007.
  • “Patent Rule Changes: Preparing a Medtech Portfolio,” Medical Device Link, September 18, 2006.

Speaking Engagements