Derek Lightner, Ph.D.

Derek is a senior associate in the Chemical Patent Prosecution practice group and specializes in the preparation and prosecution of chemical patent applications. He also has substantial experience in mechanical and design application preparation and prosecution.  Dr. Lightner’s prosecution experience ranges in a wide variety of technologies, including synthetic and process chemistry, polymer chemistry and engineering, catalysis, mineral processing, toners, lubricants, LEDs, biochemical, metallurgy, basic chemicals, wallboard, petrochemistry and exploration, MTO/MTG, fabrics and bandage materials, semiconductors, mechanical seals, reactors, extruders, gas storage, automobile and aircraft parts and systems, cleaning equipment, elevator systems, lighting systems, and electrical components.  He has also prepared a variety of opinions on validity, avoidance-infringement, and freedom-to-operate, including Paragraph IV certifications.

Dr. Lightner’s doctoral research involved the synthesis and synthetic scale-up of bridged aliphatic heterocycles relevant in the pharmaceutical industry, and preparing novel analogs of PDE5 inhibitors for testing in collaboration with a local start-up drug company and a molecular modeling group.  His master’s studies involved research into industrial polymers and processes, as well as polysaccharide chemistry; and his undergraduate research experience is in pyrrole and aromatic chemistry. He continues to pursue his interest in synthetic chemistry in his free time.

Dr. Lightner has lived in German-speaking countries for nearly two decades, including EPO work for German intellectual property firms, and he is proficient in German.

Education

• Santa Clara University School of Law (J.D.)
• Technische Universität - Wien (Dr. techn. - Ph.D.)
  •  Applied Organic Synthesis
• Freie Universität - Berlin (M.Sc.)
  •  Polymer Science
• Stanford University
  • Chemistry, B.S.
  • Germany Studies, B.A.

Admissions

• U.S. Patent and Trademark Office
• California
• Virginia
• District of Columbia

Speeches/Events/Publications

“WIPO Sub-Regional Patent Drafting Course,” WIPO-Jordanian Ministry of Industry, Trade and Supply, October 2019, Amman, Jordan

“WIPO Sub-Regional Patent Drafting Course,” WIPO-Jamaican Intellectual Property Office, June 2017, Kingston, Jamaica

“Federal Circuit revisits the ‘old’ written description requirement,” Chicago Daily Law Bulletin, Sept. 5, 2013

“Mixtures of Heteropolycycles” US 10,231,970

“Methods of Producing Heteropolycycles via Bisepoxidation,” WO 2016/054123 A1/ US 9,937,172

“Diazabicyclo- und Diazaspiro-Alkanderivate als Phosphodiesterase-5 Inhibitoren,” AT 2011 01536 / WO 2013/057205 A1

 “Crystal Structure and Conformation of a Dipyrrylmethane: The gem-Dimethyl Effect,” Monatshefte für Chemie, 2000, 131, 452-461

Languages

• German

Services

• Counseling & Strategic Advice

Technologies

• Chemicals