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Richard A. Catalina, Jr.

PARTNER
Civil and Commercial Litigation
Corporate and Commercial Transactions
Intellectual Property
Office: (973) 845-7640
Fax: (973) 845-7645
rcatalina@jmslawyers.com
Court Admissions
  • New Jersey

  • U.S. District Court, New Jersey

  • U.S. Patent and Trademark Office

Education
  • Trenton State College (The College of New Jersey), B.S.

  • Syracuse University School of Law, J.D.

Richard A. Catalina, Jr., a Partner with the firm, manages the firm’s Intellectual Property practice group. Richard is a registered patent attorney (45,372) and Certified Licensing Professional™.  Richard represents clients in a wide array of intellectual property matters, including IP procurement, protection, enforcement, and litigation. 

Richard is a seasoned intellectual property law litigator.  He has successfully litigated in federal courts across the U.S. numerous patent infringement (including defenses and counterclaims of invalidity, unenforceability, and non-infringement), copyright infringement, and Lanham Act cases involving claims of trademark and trade dress infringement, trademark dilution, counterfeiting, false advertising, and false designation of origin.  Richard has procured temporary restraining orders and preliminary injunctions against infringing parties at the onset of many cases, thereby effectively resolving the litigation favorable to his clients’ intellectual property rights and conserving substantial litigation fees and costs.  In most matters, Richard has negotiated beneficial settlement agreements for a proper and efficient disposition of the case.

Richard has also served as outside legal counsel and advisor/strategist to various pharma, biotech, and life science clients.  Richard has provided critical guidance and advice on substantive IP/FDA issues and matters, including Hatch-Waxman strategies for brand and generic products; designed and administered sophisticated competitive investigation and analysis surveys as to potential Section 505(j) ANDA generic entries (Paragraphs III and IV pathways) and “paper NDAs” under Section 505(b)(2) and comprehensive prior art and competitive pipeline landscape surveys; instituted and prosecuted USPTO inter parties reviews (IPRs) before the PTAB challenging biotech patent validity; monitored and counseled key management on competitor IP litigation, including challenges of validity and enforceability of pharmaceutical and bioactive NCEs, compounds and compositions; administered and authored comprehensive prior art search analyses and reports directed towards invalidation, freedom to operate and novelty (patentability); provided key counsel regarding management of patent portfolios and extensions of protection.

Richard is also experienced in all aspects of trademark and trade dress protection, prosecution, registration and enforcement, including inter and ex parte proceedings and appeals before the Trademark Trial and Appeal Board of the USPTO (opposition and cancellation proceedings), concurrent use matters and agreements, prosecution, and enforcement strategies.

As a Certified Licensing Professional™, Richard has negotiated, drafted, and closed hundreds of patent, software, pharma, biotech licensing matters involving several Fortune 500 companies and large international corporations.  His licensing practice focuses on maximizing IP asset value and revenue, while further offering robust protection of the licensed property.

Representative Matters
  • Prosecuted and defended numerous intellectual property based litigation matters, including cases involving claims of patent infringement, trademark and trade dress infringement, false advertising, and unfair completion.

  • Negotiated, drafted and closed hundreds of patent, software, pharmaceutical and technology licensing, and joint venture matters with a strategic focus on maximizing asset value, protection, and revenue.

  • Counseled key management on competitor IP litigation, including challenges of validity and enforceability of pharmaceutical and bioactive NCEs and compositions.

  • Protection of trade secrets, maintaining confidentiality of proprietary information and innovation, cyber-security, and data protection..

Published Works
  • Presenter, Intellectual Property Basics for Startups and Entrepreneurs, September 2017

  • Presenter, The Intersection of Software and Intellectual Property, September 2017

  • Author, The Biologics Price Competition and Innovation Act: “Do You Wanna Dance?”, New Jersey Lawyer Magazine, August 2017

  • Author, U.S. Supreme Court: Disparagement Clause of Lanham Act Violates First Amendment, LinkedIn, June 21, 2017

  • Author, Plaintiff’s Law Firm Liable for Defense Legal Fees in Patent “Troll” Litigation, LinkedIn, January 11, 2017

  • Author, Boise State University’s Trademark Grab, LinkedIn, September 12, 2016

  • Author, Recent Revisions to the Trademark Manual of Examining Procedure (TMEP), LinkedIn, May 26, 2016

  • Author, President Obama Signs Important Federal Trade Secrets Legislation, LinkedIn, May 13, 2016

  • Interviewed, Managing Your Online Reputation, New Jersey Business Magazine, April 2016