Wolff IP

Jessica Wolff, Esq.
Wolff IP, A Prof. Corp.
ph/f (760) 720-1330
cell (760) 522-4510

jessica@wolffip.com

Bar Admissions
●  California
●  Registered to practice before the United States Patent & Trademark
Office (USPTO)

Ms. Wolff founded Wolff IP in 2012 after working for twenty years in national law firms. Most recently, she was a Partner in the Intellectual Property Group at Cooley LLP advising pharmaceutical and biotech companies in a wide spectrum of intellectual property matters.  She has extensive experience in managing worldwide patent portfolios, conducting freedom to operate analyses for developing products, drafting invalidity and non-infringement opinions, and conducting due diligences for pharmaceutical, biotech, medical device and clean tech companies and their investors.  In addition to this prosecution and counseling work, Ms. Wolff has litigated chemical and biotech patents on antibodies, molecular diagnostics, DNA amplification techniques, drugs, formulations, genetic probes, viruses, and antigen assays.  She has also represented start-ups and mature public companies in a wide variety of intellectual property disputes including patent, trade secret, and breach of IP license actions.  Her litigation clients have included Onyx Pharmaceuticals, Masimo Corporation, Impax Laboratories, Mutual Pharmaceuticals, Phenomix, Biogen Idec, Sicor, Gen-Probe, AmpliMed, IDEXX, Intermedics, and Spectra-Physics.  

Ms. Wolff routinely develops patent and regulatory strategies and prosecutes patent portfolios for known chemical entities with novel indications.  As an example, Ms. Wolff obtained issued patents on a key salt and methods of treatment for Spinifex Pharmaceuticals, which was acquired by Novartis for $200 million upfront.  

Ms. Wolff also has particular expertise in preparing and conducting pharmaceutical Hatch-Waxman litigation concerning generic drugs.  For example, Ms. Wolff successfully represented a pharmaceutical company in a cutting edge Lanham Act litigation against five manufacturers of unapproved quinine sulfate that resulted in consent judgments and a preliminary injunction in separate litigation against another manufacturer.  She also successfully represented a generic manufacturer of the antitumor drug Cisplatin in a bench trial which resulted in the invalidation of a patent which would have extended for an additional 15 years Bristol-Myers' $50 million/year exclusivity on the drug.  In addition, she handled the appeal before the U.S. Court of Appeals for the Federal Circuit which affirmed the district court's ruling in her client's favor.

Ms. Wolff has prepared over 100 freedom to operate analyses and worked closely with clients to design around third-party patents.  For example, she was instrumental in developing a non-infringing formulation of the anesthetic Diprivan and obtained patent protection to prevent further generic competition.  Such strategic work has facilitated the launch of over 50 NDA, generic, and 505(b)(2) drug products.

Ms. Wolff has written and lectured on a variety of intellectual property topics, including a primer on Hatch-Waxman procedures and litigation, protecting IP for entrepreneurs, written description and enablement requirement for biotech inventions, coordination of FDA and patent prosecution strategies, 180-day exclusivity provisions, biosimilar strategies and polymorph patents.

Prior to UCLA law school, Ms. Wolff received her Bachelor's degree in Chemistry with a concentration in Cell Biology magna cum laude from Bryn Mawr College in 1986.  During her junior year of college, she was a matriculated student at Cambridge University in England where she studied Pharmacology, Biochemistry, Inorganic chemistry and conducted basic research on metal colloids.  She received her Master's degree in Organic Chemistry from the Massachusetts Institute of Technology in 1988.  Her research focused on analogues of chorismic acid, a key intermediate in the biosynthetic pathway for aromatic compounds in lower organisms.  Prior to attending law school, Ms. Wolff worked as a research scientist in the Cell Biology Department of Duke University Medical School designing and synthesizing 5-alpha-reductase inhibitors for the treatment of prostate cancer and osteoporosis.

jessica r. wolff, esq.
REGISTERED PATENT attorney

Education
●  University of California, Los Angeles School of Law
JD, 1992
●  Massachusetts Institute of Technology
MS Organic Chemistry, 1988
●  Bryn Mawr College
AB Chemistry, 1986, magna cum laude 

​a Prof. Corp. 

Court Admissions
●  Court of Appeals, Federal Circuit
●  U.S. District Court, Central District of California
●  U.S. District Court, Eastern District of California
●  U.S. District Court, Northern District of California
●  U.S. District Court, Southern District of California