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Dorothy Whelan
Dorothy Whelan began specializing in post-grant proceeding after the America Invents Act created the method of challenging patents before the Patent Trial and Appeal Board in 2012. (Submitted photo)

Breaking the Ice: Practice reinvented with patent challenges

Name: Dorothy Whelan

Title: Senior principal, Fish & Richardson

Education: B.S., chemistry, Yale University; S.M., polymers, Massachusetts Institute of Technology; J.D., Boston College Law School

Dorothy Whelan, senior principal at Fish & Richardson, reinvented her practice by focusing on post-grant proceedings.

Whelan began specializing in those proceeding after the America Invents Act created the method of challenging patents before the Patent Trial and Appeal Board in 2012.

The firm became the first and possibly only one to have some patent claims found invalid, Whelan said, in a case against the arthritis drug Humira. That result led to a Minnesota Lawyer Attorneys of the Year honor for Whelan.

Business has grown since. “I’m probably busier right now even than I’d like to be,” Whelan said. “That’s a good thing.”

Post-grant proceedings are like “streamlined district court litigation,” Whelan said, with briefs, arguments and depositions but without lengthy discovery.

Whelan, who had traveled regularly to see Minnesota clients, moved here from Boston with her husband and then 4-year-old to open Fish’s Minneapolis office in 1994.

Q: What’s the best way to start a conversation with you?

A: Ask me which books I’m reading or tell me about the books you’re reading.

Q: Why did you study law and pursue it as a career?

A: I was going to be an art history major, then switched to chemistry and went to graduate school in engineering but didn’t like what I was doing. A friend from college was working with my present firm in Boston. He said, “I’ve got this great job working with inventors but at a law firm.” He got me interview there and they hired me. I finished my master’s degree then started law school full time.

Q: What books are on your bedside table or e-reader?

A: I just finished “The Black Rock” by Evie Wyld and I’m about to start “Jack” by Marilynne Robinson.

Q: What’s a pet peeve of yours?

A: When people promise to do something by a certain date but don’t deliver.

Q: What do you like best about your work?

A: The intellectual challenge. I’m trying to develop a strategy that avoids problems or at a point where a problem has arisen develop a strategy for dealing with it. Typically I factor in science and engineering but also deal with legal principles and the business objectives of the client. You’re trying to meld all of that into a coherent strategy.

Q: What do you least like about it?

A: Pre-COVID I would have said business travel because it really wears on you. Now that I haven’t done any I’m actually starting to miss people. Maybe it wasn’t so bad.

Q: What do you like doing away from work?

A: I read or play tennis.

Q: If someone visits you in your hometown, what would you take them to see or do?

A: My hometown is a New York suburb, Yorktown Heights. I could take someone to see the house where (Alexandria Ocasio-Cortez) grew up because she did grow up in Yorktown Heights.

Q: Is there an attorney or judge, past or present, whom you most admire—and why?

A: Attorney Bob Hillman who led Fish & Richardson for many years. He was a giant, literally and intellectually. He was really my mentor. He taught me that there was an intellectual component to intellectual property law. He also taught me how to be a good attorney. He passed away a few years ago, and to be honest I still miss him.

Q: What’s a misconception people have about working as an attorney?

A: Some people think it’s boring, but it’s not boring. Every situation is unique. It presents a unique set of challenges. That’s what I like about it. But it’s not boring. You’re not doing the same thing over and over again.

Q: What’s your favorite depiction of the law or the legal profession in popular culture?

A: Probably “The Paper Chase,” although I don’t think law school was anything as bad as “The Paper Chase.” That film could have scared people away from going to law school. I enjoyed it.

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