JOSEPH J. DIDONATO
Of Counsel and Registered Patent Attorney
Office (855) 460 8632
Mr. DiDonato's practice concentrates on matters related to intellectual property and gaming as many issues overlap between these two practice areas. Relying on his experience in corporate transactions regarding intellectual property and gaming and his knowledge of the substantive laws and rules of both areas, Mr. DiDonato provides practical legal advice that considers both the business plan and the protection of products or services.
Mr. DiDonato's experience extends to business issues such as the creation of product development and commercialization strategies for IP portfolios and early stage technologies. Additionally, he assists clients by reviewing and preparing agreements regarding intellectual property matters, including patents, trademarks and software licenses and service agreements. Mr. DiDonato writes legal memoranda concerning intellectual property issues, including patent infringement, validity and patentability, and FDA approval regarding generic drugs.
Mr. DiDonato has been involved in gaming issues including horse racing, casino practice and how the continual changes in laws and regulations affect various businesses outside of casinos and horse racing tracks, i.e., simulcasting, licensing and collaboration for business development to increase fan interest and business opportunity. Having a lifelong interest in horse racing, Mr. DiDonato counsels clients regarding business transactions in the industry such as the purchase and sale of horses, consortiums and compliance with regulations by the individual states for the protection and growth of the horse racing industry.
Mr. DiDonato worked in a large Philadelphia law firm providing expertise in a variety of areas including due diligence, commercialization of IP portfolios, opinion writing and coordination of FDA approval process for technologies, implementing compliance protocols for FDA, Bayh-Dole and Hatch-Waxman Acts, patent and trademark (foreign and domestic) prosecution. Additionally, Mr. DiDonato coordinated commercial and patentability evaluation of technologies, developed and implemented intellectual property strategies, and supervised “outside counsel” in the drafting and prosecution of US and foreign patent applications, including PCT applications in biotechnology, bio-engineering, biomedical and related arts.
Further, Mr. DiDonato's experience includes supervising patent litigation and prosecution by outside counsel for a wide range of technologies, performing market valuation of technologies for licensing agreements and “start-up” companies, creating product development and commercialization strategies for IP portfolios and early stage technologies, and supervision and coordination of an IP Practice group staff for efficient organization, evaluation and use of IP portfolio in licensing collaborations and all transactional matters.
Prior to entering the legal field, Mr. DiDonato conducted in vitro and in vivo testing for investigation of growth factors and endocrines as a research associate at the Pennsylvania College of Podiatric Medicine. He designed and conducted experiments for Aloecorp in receptor analysis, fibroblast stimulation, tensile strength and wound healing. He also conducted experiments on effects of therapeutics on the central and peripheral nervous systems, stimulation of skeletal and cardiac muscle; including receptor activation, ATP production and mechanism of contraction motion. Furthermore, Mr. DiDonato researched technical literature, wrote articles for publication, and coordinated research for use in product patents.
J.D., Franklin Pierce Law Center
B.S., Biology, Loyola University (Maryland)
New Jersey State
New York State
U.S. Patent and Trademark Office
United States District Court, District of New Jersey
Association of University Technology Managers