Attorney Biography

John W. Caldwell

Partner
Philadelphia
P. 215.564.8914
F. 215.568.3439
caldwell@woodcock.com
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John Caldwell often makes the point that patents are essentially business tools. A patent that does not provide adequate protection against improper competition may not be worth much, he says. But he believes that there are few business tools stronger than a solid patent in a well-planned portfolio. Planning does figure prominently in John's practice as he has a long track record in refocusing corporate decision making as it relates to intellectual property.

Sound patent and trademark decisions are especially important for start-up companies. This is why he enjoys counseling companies that are just emerging. "The younger, the newer, the more fragile the business, the more important patent and trademark planning becomes," John says. "One needs to understand the patent landscape; to know what intellectual property other companies own so that an enterprise can plan to achieve an exclusive position."

John's expertise in patent prosecution has earned him a national reputation. He is listed in Who's Who in American Law and is in frequent demand as a guest lecturer on the topic. In large part, John has developed that reputation for his commitment to start-ups, as well as to his interest in technology transfers from academic institutions to companies that often are academic spinoffs. John has also come to focus upon creative licensing arrangements, strategic pools and standards setting arrangements.

He has been instrumental in securing patent protection for new families of nucleic acid-active drugs and guided patents in breakthrough polymer batteries. John is skilled in all aspects of pharmaceutical patent law and regularly deals with Orange Book issues. He has also done patent work related to the development of microchip devices that employ light, rather than electricity, for processing. Some of the other technologies John has dealt with include sensitive aircraft parts, transgenic fungi, gene stimulation, artificial organs, bioimplantable devices and materials, new polymers, light emitting materials, industrial chemicals, agricultural chemicals, and lithography.

Clearly, a sophisticated scientific knowledge is necessary for that kind of patent track record. But John also adheres to a simple goal in his work. "It's about people," he says. "One has to figure out what the client needs, to lead the client to the correct decision and then to 'deliver the goods.' The only way to do that is to ask pertinent questions and listen very carefully to the answers."

PROFESSIONAL ACHIEVEMENTS

  • Recognized as a Best Lawyer for Pennsylvania and Philadelphia by Best Lawyers in America®
  • Member and past president, Philadelphia Intellectual Property Law Association
  • Member, International Trademark Association
  • Member and former member of the board, Copyright Society of the U.S.
  • Member, American Intellectual Property Law Association
  • Member, Federal Circuit Bar Association
  • Member and former member of the board, Philadelphia Volunteer Lawyers for the Arts

  • EMPHASIS
  • Global IP business planning
  • Patent procurement
  • Counseling
  • Litigation avoidance and positioning

  • ADMITTED
  • Pennsylvania
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Third Circuit
  • U.S. District Court, E.D. Pa.
  • U.S. Patent and Trademark Office
  • U.S. Supreme Court

  • EDUCATION
  • Villanova University School of Law, J.D., 1978
  • Johns Hopkins University, M.A., Chemistry, 1973
  • Rice University, B.A., Chemistry, 1971