Joe's practice includes intellectual property due diligence, Patent Office appeals, preparation and prosecution of patent applications, and counseling on patent strategy, patent infringement and licensing issues. He represents clients in a wide range of technologies, including chemicals, polymers, pharmaceuticals, materials science, adhesives, coatings, composite materials, medical devices, semiconductor fabrication, and microelectromechanical system (MEMS) fabrication.
Joe was recognized as one of the "World's Leading Patent Professionals" in the Intellectual Asset Management "IAM Patent 1000" publication from 2015 to 2018. He was also named a “Life Science Star” from 2013 to 2018 by LMG Life Sciences in recognition of the strength of his patent prosecution, strategy and portfolio management practice. He is recognized by both print and on-line news media for his experience relating to patent matters, and has been quoted numerous times, including by the San Diego Daily Transcript, Orange County Business Journal, Milwaukee Wisconsin Journal Sentinel, Law360, Healthline and InsideCounsel.
He has presented numerous speeches to legal and technical organizations, including AIPLA and participants in the Biotechnology/Chemical/Pharmaceutical Partnership at the U.S Patent Office. He has also provided technical training to U.S. Patent Examiners in the Patent Examiner Technical Training Program.
After completing graduate school, Joe worked for seven years as a research scientist in the aerospace and chemical industries. His research resulted in numerous publications and patents and focused on chemical and polymer syntheses and manufacturing, liquid crystals, composite materials, rubbers, adhesives, coatings, biomedical polymers, and water-soluble polymers.
In 1995, Joe joined the Patent Law Department at a major specialty chemicals and materials technology company, as a patent agent and began attending law school in the evenings. He graduated from law school and became Patent Counsel at the company in 1999.
Joe joined the firm in 2000 and became a partner in 2006.
Joe has received multiple awards and has been honored in both national and international forums for his legal accomplishments:
- Recognized as one of the "World's Leading Patent Professionals" in the Intellectual Asset Management (IAM) "Patent 1000" publication from 2015 to 2019 for Prosecution. In the 2018 guide, Dr. Mallon was recognized for his experience in the aerospace and chemical industries and for "taking the lead in obtaining NASH patent portfolio for Nitto Denko, which was licensed to Bristol-Myers Squibb for $100 million". In 2017, he was described by one client as "the single most effective attorney [they've] ever engaged in [their] 25 years in intellectual property."
- Named a "Life Science Star" by Legal Media Group (LMG) publication from 2013 to 2018. Dr. Mallon was noted for making a name for himself on the non-contentious side of the IP industry and was praised for his deep understanding of the technology and attitude towards the industry. He was recognized for his patent prosecution, patent advisory, strategy and management practice, specifically for combination products, drug delivery devices, drug formulations, macromolecules and new chemical entities. In 2016, he was recognized for his work in the areas of antibiotics, antiviral drugs, biofuels, cardiovascular devices, pharmaceuticals, and polymers. In 2017, he was recognized for his extensive experience in prosecution and counseling for the pharmaceutical and medical device industries. In 2018, Dr. Mallon was once again recognized for Patent Stategy & Management.
- Recognized in The Legal 500 "United States 2015" as being an outstanding practitioner. In this guide, Dr. Mallon was noted for his patent licensing and transactional work.
J.J. Mallon, "USPTO Signals Support For New Basis To Invalidate Patents", Law360 (February 6, 2018). Rated one of the "10 Most-Read IP Law360 Guests of 2018" by Law360.
J. J. Mallon, "Michelle Lee zeros in on patent quality", Intellectual Property Magazine (May 12, 2015).
J. J. Mallon and Kate S. Gaudry, "Improving Appeal Conferences at the USPTO", Law360 (December 3, 2012).
Kate S. Gaudry and J. J. Mallon, “The RCE Cliff”, Guest Post on Patently-O (November 19, 2012).
K. S. Gaudry and J. J. Mallon, "Appeals and RCEs - the Frequency and Success of Challenges to Specific Rejection Types," Intellectual Property Today (cover story, November 2011).
J. J. Mallon and K. S. Gaudry, "An Issue-by Issue Analysis of Patent Application Appeals," Intellectual Property Today (April 2009).
J. J. Mallon, H. A. Katzman, and W. T. Barry, "Polyarylacetylene-Matrix Composites for Solid Rocket Motor Components", J. Adv. Mater., 26(3), 21-27, (1995).
J. J. Mallon and P. M. Adams, "Synthesis and Characterization of Novel Epoxy Monomers and Liquid Crystal Thermosets", J. Polym. Sci. Part A: Polym. Chem., 31, 2429-2260 (1993).
J. J. Mallon, J. C. Uht, and C. S. Hemminger, "Surface Analyses of Composites Exposed to the Space Environment on the Long Duration Exposure Facility Satellite", AIAA Journal of Spacecraft and Rockets, 30(4), 495-501 (1993).
J. J. Mallon, J. C. Uht, and C. S. Hemminger, "Surface Analyses of Composites Exposed to the Space Environment on LDEF", in “LDEF - 69 Months in Space. Second Post-Retrieval Symposium" NASA Conference Publication 3194, 963-976 (1993).
J. J. Mallon and P. M. Adams, "Characterization of Liquid Crystal Alignment on Carbon and Organic Fibers by Quantitative X-ray Diffraction", Mol. Cryst. Liq. Cryst., 231, 69-78 (1993).
J. J. Mallon and P. M. Adams, "Liquid Crystal Alignment on Fibers", Polym. Prepr. (Am. Chem. Soc., Div. Polym. Chem.), 33(1), 493-4 (1992).
J. J. Mallon and P. M. Adams, "Alignment of Nematic and Smectic A Liquid Crystals on Carbon, Organic and Inorganic Fibers", Mol. Cryst. Liq. Cryst., 213, 173-186, (1992).
J. J. Mallon, "Book Review: Handbook of Fiber Science and Technology", Mat. Manuf. Proc., 6(4), 745-748 (1991).
J. J. Mallon and P. M. Adams, "Liquid Crystal Orientation on Carbon Fibers", Mol. Cryst. Liq. Cryst., 208, 65-75, (1991).
J. J. Mallon, T. C. Sung, E. D. T. Atkins and S. W. Kantor, "All-Hydrocarbon Liquid Crystalline Polymers", in "Liquid Crystalline Polymers: ACS Symposium Series 435", eds. R. A. Weiss and C. K. Ober, American Chemical Society, Washington D. C., 1990, pp. 158-173.
J. J. Mallon and S. W. Kantor, "Thermotropic Hydrocarbon Side-Chain Liquid Crystalline Polymers. 3. Characterization of Liquid Crystalline Phases", Macromolecules, 23, 1249-1256 (1990).
J. J. Mallon T. C. Sung and S. W. Kantor, "All Hydrocarbon Liquid Crystalline Polymers", Polym. Prepr. (Am. Chem. Soc., Div. Polym. Chem.), 30(2), 503-4 (1989).
J. J. Mallon and S. W. Kantor, "Thermotropic Hydrocarbon Side-Chain Liquid Crystalline Polymers. 2. Polymer Synthesis and Tacticity", Macromolecules, 22, 2077-2082 (1989).
J. J. Mallon and S. W. Kantor, "Thermotropic Hydrocarbon Side-Chain Liquid Crystalline Polymers. 1. Synthesis and Characterization of Monomers and Model Compounds", Macromolecules, 22, 2070-2077 (1989).
J. J. Mallon, "Thermotropic Hydrocarbon Side-Chain Liquid Crystalline Polymers", Ph.D. Dissertation, University of Massachusetts (1988).
J. J. Mallon and S. W. Kantor, "Thermotropic Hydrocarbon Side Chain Liquid Crystalline Polymers", Mol. Cryst. Liq. Cryst. Inc. Nonlin. Opt., 157, 43-56, (1988).
J. J. Mallon and S. W. Kantor, "Thermotropic Hydrocarbon Liquid Crystalline Monomers and Model Compounds", Mol. Cryst. Liq. Cryst. Inc. Nonlin. Opt., 157, 25-41 (1988).
Speeches & Seminars
“J. Mallon and J. Burke, "Estimating USPTO Allowance Rates for Therapeutic Payload Delivery Inventions", Poster presentation at TIDES: Oligonucleotides and Peptide Therapeutics Conference, San Diego CA (May 2019).
“Functional Claiming in the Life Sciences”, presentation to the Biotechnology/Chemical/Pharmaceutical Partnership meeting, United States Patent and Trademark Office (October 19, 2016).
"Functional Claiming in the United States: Evolving Law and Best Practice", 44th Annual Intellectual Property Owners Association (IPO)’s Annual Meeting, New York (September 12, 2016).
"Strategies for Appealing Cases to the PTAB and TTAB," PTAB/TTAB Stadium Tour, S.J. Quinney College of Law, Salt Lake City, UT (March 4, 2016).
“Starting the Start-Up: IP Basics,” American Institute of Chemical Engineers 2015 Spring Meeting, Austin, TX (April 29, 2015).
“Clarity and Markush Claims”, presentation to the Inaugural Bicoastal Biotechnology/Chemical/Pharmaceutical Partnership meeting, United States Patent and Trademark Office (September 17, 2014).
"Patent Pro's Ideal Patent - Or, Why We Can Never Be Happy", 42nd Annual Intellectual Property Owners Association (IPO)’s Annual Meeting, Vancouver, British Columbia (September 8, 2014).
“Improving Patent Quality and After-Grant Reviews and Reducing Pendency”, Intellectual Property Owners 24th Conference on USPTO Law and Practice (PTO Day), Washington D.C. (March 25, 2014).
“Lead Compound Obviousness Analysis”, presentation to Biotechnology/Chemical/Pharmaceutical Partnership meeting, United States Patent and Trademark Office (March 6, 2012).
“Lead Compound Obviousness Analysis”, presentation to The Patent Office Visits San Diego Conference, University of San Diego (February 21, 2012).
"How to Jump Start Your Company’s Patent Program", IP Impact 2011, Northern Virginia and Research Triangle Park (September 2011).
“Enhancing Compact Prosecution”, presentation to Biotechnology/Chemical/Pharmaceutical Partnership meeting, United States Patent and Trademark Office (September 13, 2011).
"Pursuing an Aggressive Patent Portfolio Strategy in the U.S.", IP Impact 2011, San Diego, CA (August 15, 2011).
“Tech Fair - Polymer Science”, Educational presentation to Patent Examiners in Technical Center 1600, United States Patent and Trademark Office (July 20, 2011).
“Overview of Polymer Science”, Patent Examiner Technical Training Program, United States Patent and Trademark Office (April 5, 2011).
“RCE or Appeal?,” invited presentation to the American Intellectual Property Law Association, AIPLA Mid-Winter Institute, La Quinta, CA (January 28, 2010).
"Patenting Nanotechnology: A Review of Recent U.S. Patent Office Decisions on Nanotech Inventions," invited presentation to the Chemistry and the Law Section of the American Chemical Society (ACS), 237th ACS National Meeting, Salt Lake City, UT (March 24, 2009).