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Partner at McDermott Will & Emery LLP | United States of America (USA)
Jason Novak is a partner in the firm’s San Francisco office, where he is a member in the IP Procurement and Portfolio Management practice group. He focuses his practice in patent counseling, opinion work, and patent preparation and prosecution in the mechanical, chemical, medical, food process and food science arts. He has drafted and prosecuted numerous domestic and international patent applications directed to a wide range of technologies, including pharmaceuticals, food chemistry, food processing, product packaging, medical treatments, and medical, mechanical and electrochemical devices.
Mr. Novak regularly conducts clearance, invalidity and patentability searches for said technologies, and has prepared numerous corresponding opinions. For example, Mr. Novak has played a vital role in extensive clearance projects in the medical field, where the clearance of the associated products has involved the review of thousands of patents and applications across many disciplines, and has further involved the research for and preparation of corresponding clearance and invalidity opinions.
Mr. Novak also has experience with prosecuting reissue and reexamination applications, as well as preparing ex parte reexamination requests. For example, Mr. Novak played a central role in the research for and preparation of ex parte reexamination requests for five advertising software patents in advance of a client’s motion to stay a patent infringement action brought by one of its competitors.
Combined with the expertise he gathered as a research engineer at Kraft Foods, Mr. Novak’s private practice experience allowed him to play an integral role in the development of product and process clearance procedures for a major food products client. This work required the review of hundreds of patents across all areas of food chemistry and food process engineering, the corresponding patent mapping of the reviewed patents, and the consolidation of the patents to a series of simple questions for use by the client’s patent group to clear all new products and processes within the commercialization timeline. Mr. Novak was also able to participate in meetings involving the client’s cross-functional personnel with the express purpose of determining the most efficient and cost-effective implementation of the new procedures, which required knowledge of commercialization processes, capital approval timing, capital installation, product development timing and product approval procedures.