Xavier Pillai, Ph.D.

Shareholder

Xavier Pillai, Ph.D.

Overview

Dr. Pillai specializes in intellectual property law, particularly in patent law relating to chemicals, pharmaceuticals, and biotechnology. He is involved in preparation of patent applications, patent filing and prosecution with the USPTO. He directs patent procurement in the U.S., Europe, Canada, Japan, Australia, China, India, Singapore, Mexico, and many other countries. He also provides opinions on patentability of inventions, patent infringement, patent validity, and patent challenges including inter partes reviews and patent re-examinations.

Experience

Dr. Pillai has prepared, filed, and prosecuted over many hundreds of patents in organic chemistry, polymer chemistry, and process chemistry for research institutions, industries, and individual inventors. He has advised clients both in the U.S. and in foreign countries, e.g., Germany, UK, China, and India.

Particular areas of the patents he has been involved with include pharmaceuticals including small molecules and macromolecules, vaccines, diagnostics, high polymers, rubber chemistry, polymer foams, high temperature polymers, glasses, lithographic printing plate compositions, security documents, lubricants, antimicrobials, artificial sweeteners, anti- malarials, anti-virals, anti-cancer agents, anti-inflammatory compounds, anti- muscarinic agents, dopamine antagonists, cardio-protective agents, kinase inhibitors, chemo-preventives, bio-targeting agents, ophthalmic agents, anti- progestational agents, self-assembling polymers, membranes and filters for use in biomedical applications, inks, marking compositions, and liquid crystal compositions.

Education

  • Chicago-Kent College of Law, J.D., 1994
  • Case Western Reserve University, Ph.D. in Polymer Science, 1984

Admissions

  • Illinois, 1994
  • Registered to practice before the U.S. Patent and Trademark Office

Courts

  • U.S. District Court for the Northern District of Illinois

Honors

Dr. Pillai received The Roger D. Middlekauf Award from the American Chemical Society (ACS), Chemistry and the Law Division, on September 7, 2013, in recognition of his “continuing and outstanding service and dedication to the missions and goals of the Society.” He was named a Leading Lawyer in Intellectual Property Law – Leading Lawyers Network, 2014 – 2020. He was selected as the Pharmaceutical Lawyer of the Year – USA by the Lawyer Monthly Legal Awards, 2016 – 2018.

Professional Affiliations

Dr. Pillai was elected and served as the Chair of the Chemistry and the Law (CHAL) Division of the ACS in 2011, and again elected, and serves, as the Chair of the CHAL Division for 2020 and 2021.  He also serves on the Committee on Patents and Related Matters of the ACS.

Articles, Publications & Lectures

Dr. Pillai is a named inventor on the following U.S. Patents:

  • 5,436,296 Compositions of polymeric materials including polyalkylene terephthalates and polyethylene
  • 5,271,843 Chlorine-tolerant, thin-film composite membrane
  • 5,145,584 Processes for using a thin film composite ultrafiltration membrane
  • 5,085,775 Thin film composite ultrafiltration membrane
  • 5,013,448 Processes for the preparation of chlorine-resistant polyester semipermeable membranes
  • 4,932,986 Crosslinked gas selective membranes
  • 4,880,545 Ultrafiltration membranes and a method for the separation of sugars using the same

Dr. Pillai is an author of the following technical publications:

  • Synthesis and characterization of a multiblock copolymer of poly(N-isovaleryl ethyleneimine) and poly(ethylene glycol): J. Polymer Science, Polym. Chem. Ed., 26, 3043-3069 (1988).
  • Effect of impurities on cellulose acetate membrane performance: Recent Advances in Separation Techniques-III, AIChE Symposium Series No. 250, 82 (1986).
  • Synthesis of bifunctional monodisperse poly(N-isovaleryl ethyleneimine): J. Polymer Science, Polym. Chem. Ed., 24, 1455-1461 (1986).
  • Block copolymers of poly(ethylene glycol) and poly(N-isovaleryl ethyleneimine) – Kinetics of initiation: ACS Symposium Series No. 286, Ring-Opening Polymerization (1985).
  • Preparation and characterization of p-toluene sulfonyl ester and amino derivatives of tri- and poly(ethylene glycol): J. Polymer Science, Polym. Chem. Ed., 22, 1623-1632 (1984).

Dr. Pillai is an author of the following legal publications:

  • Pillai, X., “Fulfilling the Utility Requirement when Seeking Patents for Agrochemical Inventions,” ACS Symp. Series, Vol. 1362, Ch. 6, pp. 83-96 (Nov. 3, 2020).
  • Pillai, X., “The U.S. Supreme Court Teaches How to Decide When an Invention is Obvious,” ACS Symp. Series, Vol. 1363, Ch. 3., pp 41-60 (Nov. 12, 2020).
  • Pillai, X., “Strengthen Your Patents on Agricultural Inventions by Appealing the Patent Examiner’s Rejections to the Patent Trial and Appeal Board (PTAB)”, ACS Symp. Series, Vol. 1362, Ch. 7, pp 97-109 (Nov. 3, 2020).
  • “Biotech Buzz, AIPLA Case Law Review (May 2018)” on Sumitomo v. Emcure Pharmaceuticals (Fed. Cir. Apr. 6, 2018).
  • “Strategies for Strengthening Patent Protection of Pharmaceutical Inventions in Light of Federal Court Decisions,” co-authored with William A. Kinney of IteraMed Consulting LLC, Pennsylvania Biotechnology Center, Current Topics in Medicinal Chemistry, 2010, 10, 1929-1936.
  • “To Successfully Enforce Your Patent Do Not Let Form Triumph Over Substance While Writing The Patent,” Published Online by EzineArticles, August 23, 2006.
  • “To Crush Your Competition A Strong Patent Is Important – Learn How and Why,” Published Online by EzineArticles, August 15, 2006.
  • “The Patent Office’s Proposed New Rules For Disclosing Prior Art Could Increase Patent Applicant’s Burden,” Published Online by EzineArticles, July 28, 2006.
  • “Are You Prepared To Face The Patent Office As It Is Going To Grant Only Narrow Patents?” Published Online by ArticleMuse, June 4, 2006.
  • “A Strong Patent Is Important To Halt Infringer’s Operations, Says U.S. Supreme Court,” Published Online by EzineArticles, May 23, 2006.
  • “Can You Start Selling Your Invention Before Patenting It?” Published Online by EzineArticles, May 9, 2006.
  • “Shouldn’t Great Inventions Deserve Iron-Clad Patents?” Published Online – EzineArticles, April 2006.
  • “Intellectual Property is Key to Biotech Industry’s Future,” IndUS Business Journal, 2002.

Dr. Pillai has spoken on the following topics at various business and professional meetings and webinars:

  • “U.S. Patent Law Update” to a group of German patent attorneys/agents in Munich, Germany, September 26, 2019.
  • “Strengthening Your Patent Rights in Light of Recent Federal Circuit Court Decisions,” American Chemical Society National Meeting, Chemistry and the Law Division, San Diego, CA, August 25, 2019.
  • “Patent Searching of Small Molecules – R&D Opportunities”, CINF Symposium, American Chemical Society National Meeting, Chemistry and the Law Division, San Diego, CA, August 25, 2019.
  • “Appealing to the Patent Trial and Appeal Board of the USPTO,” American Chemical Society National Meeting, AGRO Division, San Diego, CA, August 29, 2019.
  • “So You Want to be a Patent Attorney or IP Professional?” American Chemical Society Webinar, June 13, 2019.
  • “Strengthening Your Patent Rights in Light of Recent Federal Circuit Court Decisions,” American Chemical Society National Meeting, Chemistry and the Law Division, Orlando, FL, March 31, 2019.
  • “U.S. Patent Law Update” to a group of Australian patent attorneys/agents in Brisbane, Australia, February 5, 2019.
  • “Strategies for Obtaining U.S. Patents involving Biomarkers,” 16th Annual Congress of IDDST, Jinan, China, November 8, 2018.
  • “Strategies for Obtaining U.S. Patents on Drug Discoveries,” 16th Annual Congress of IDDST, Jinan, China, November 7, 2018.
  • “Opportunities & Challenges in Patenting Agricultural Inventions,” American Chemical Society National Meeting, AGRO Division, Boston, MA, August 23, 2018.
  • “Strengthening Your Patent Rights in Light of Recent Federal Circuit Court Decisions,” American Chemical Society National Meeting, Chemistry and the Law Division, Boston, MA, August 19, 2018.
  • “U.S. Patent Law Update” to a group of patent agents in Chennai, India, August 10, 2018.
  • “U.S. Patent Prosecution Practices & Tips” to a group of patent agents in Hyderabad, India, July 27, 2018.
  • “Opportunities and Challenges in Patenting Bio-based Monomers and Plastics,” INNOPLAST Bioplastics Conference, Newark, NJ, June 27, 2018.
  • “Strengthening Your Patent Rights in Light of Recent Federal Circuit Court Decisions,” American Chemical Society National Meeting, Chemistry and the Law Division, New Orleans, LA, March 18, 2018.
  • “Strengthening Your Patent Rights in Light of Recent Federal Circuit Court Decisions,” American Chemical Society National Meeting, Chemistry and the Law Division, Washington, DC, August 20, 2017.
  • “Young Researchers in Chemistry Bring Value to Intellectual Property,” 46th IUPAC World Chemistry Congress, São Paulo, Brazil, July 10, 2017.
  • “Strengthening Your Patent Rights in Light of Recent Federal Circuit Court Decisions,” American Chemical Society National Meeting, Chemistry and the Law Division, San Francisco, CA, April 2, 2017.
  • “Do not lose your invention by improperly naming inventors on the patent”, American Chemical Society Meeting, San Francisco, CA, April 3, 2017.
  • “Life Cycle Management and Research Opportunities for Patentable Inventions,” American Chemical Society Webinar, March 14, 2017.
  • “Strengthening Your Patent Rights in Light of Recent Federal Circuit Court Decisions,” American Chemical Society National Meeting, Chemistry and the Law Division, Philadelphia, PA, August 21, 2016
  • “Duty of Disclosure when Obtaining Patents,” American Chemical Society National Meeting, Division of Chemical Information, San Diego, CA, March 14, 2016
  • “Strengthening Your Patent Rights in Light of Recent Federal Circuit Court Decisions,” American Chemical Society National Meeting, Chemistry and the Law Division, San Diego, CA, March 13, 2016.
  • “USPTO Clarifies What is Patent Eligible Subject Matter,” 249th American Chemical Society National Meeting, Chemistry and the Law Division, Denver, CO, March 22-26, 2015.
  • “Review of Recent Federal Circuit Decisions Relevant to what Scientists Need to Know about Patent Filing and Prosecution,” 248th American Chemical Society National Meeting, Chemistry and the Law Division, San Francisco, CA, August 10-14, 2014.
  • “Review of Recent Federal Circuit Decisions Relevant to what Scientists Need to Know about Patent Filing and Prosecution,” 247th American Chemical Society National Meeting, Chemistry and the Law Division, Dallas, TX, March 16-20, 2014.
  • “Strengthening Your Patent Rights in Light of Recent Federal Circuit Court Decisions,” American Chemical Society National Meeting, Chemistry and the Law Division, Indianapolis, IN, September 8-12, 2013
  • “Strengthening Your Patent Rights in Light of Recent Federal Circuit Court Decisions,” American Chemical Society National Meeting, Chemistry and the Law Division, New Orleans, LA, April 7-11, 2013
  • “Patent Prosecution Under the Leahy-Smith America Invents Act,” NIH Office of Technology Transfer, Rockville, MD, April 4, 2013
  • “Review of Recent Federal Circuit Court Decisions Relevant to what Scientists Need to Know about Patent Filing and Prosecution,” American Chemical Society National Meeting, Chemistry and the Law Division, Philadelphia, PA, August 19-23, 2012
  • “Review of Recent Federal Circuit Court Decisions Relevant to what Scientists Need to Know about Patent Filing and Prosecution,” American Chemical Society National Meeting, Chemistry and the Law Division, San Diego, CA, March 25-29, 2012
  • “Patenting Chemical Entities – Patent Filing Strategies,” Presented to the NIH Center for Translational Therapeutics, Rockville, MD, September 28, 2011
  • “Strengthening Your Patent Rights in Light of Recent Federal Court Decisions,” American Chemical Society National Meeting, Chemistry and the Law Division, Denver, CO, August 28 – September 1, 2011
  • “Strengthening Your Patent Rights in Light of Recent Federal Court Decisions,” American Chemical Society National Meeting, Chemistry and the Law Division, Anaheim, CA, March 27-31, 2011
  • “Strengthening Your Patent Rights in Light of Recent Federal Court Decisions,” American Chemical Society National Meeting, Chemistry and the Law Division, Boston, MA, August 22-26, 2010
  • “Strengthening Your Patent Rights in Light of Recent Federal Court Decisions,” NIH Office of Technology Transfer, Rockville, MD, August 19, 2009
  • “Review of recent Federal Circuit decisions relevant to what scientists need to know about patent filing and prosecution,” 238th American Chemical Society National Meeting, Chemistry and the Law Division, Washington, D.C., August 16-20, 2009
  • “Strengthening Your Future Patent Rights in Light of Recent Federal Court Decisions,” 237th American Chemical Society National Meeting, Chemistry and the Law Division, Salt Lake City, UT, March 22, 2009
  • “Strengthening Your Future Patent Rights in Light of Recent Federal Court Decisions,” 236th American Chemical Society National Meeting, Chemistry and the Law Division, Philadelphia, PA, August 17, 2008
  • “Strengthening Your Future Patent Rights in Light of Recent Federal Court Decisions,” 235th American Chemical Society National Meeting, Chemistry and the Law Division, New Orleans, LA, April 6, 2008
  • “Patent Applications Best Practice,” Presented to Nicolas Piramal IP Group, Mumbai, India, February 18, 2008.
  • “The new USPTO Rules On Continuation Applications and Claims,” Chicago Bar Association’s lunch seminar to the Young Lawyers’ section, Chicago, IL, October 3, 2007.

Languages

  • Tamil
  • Hindi

Insights

Education

  • Chicago-Kent College of Law, J.D., 1994
  • Case Western Reserve University, Ph.D. in Polymer Science, 1984

Admissions

  • Illinois, 1994
  • Registered to practice before the U.S. Patent and Trademark Office

Courts

  • U.S. District Court for the Northern District of Illinois