Gary D. Colby, Ph.D. practices in the area of intellectual property law for biotechnology, medical and chemical technologies. Mr. Colby has extensive experience preparing and prosecuting patent applications, analyzing issued patents and published applications, and negotiating and drafting technology transfer agreements. Mr. Colby is registered to practice before the United States Patent and Trademark Office and in the state of Virginia. He assists large and small corporations, universities and other nonprofit institutions, and individuals with patent prosecution and litigation matters.

Mr. Colby is a 1996 graduate of Georgetown University Law Center and a graduate of Virginia Tech (Ph.D., anaerobic microbiology; B.S., chemical engineering).

Areas Of Practice

Intellectual Property Law

Professional Activities

Virginia State Bar
Member, Phi Sigma Biological Honor Society, 1992-present

Admissions

U.S. Patent and Trademark Office
Virginia

Education

Georgetown University Law Center, J.D., 1996

Experience

Duane Morris LLP
- Partner, 2005-present
- Associate, 2003-2005
Akin, Gump, Strauss, Hauer & Feld, Philadelphia, Pennsylvania (Panitch, Schwarze, Jacobs & Nadel, prior to merger with Akin Gump in Summer, 1999)
- Associate, 1997-2002
National Cancer Institute, NIH, Rockville, Maryland
- Senior Technology Development & Patent Specialist, 1996-1997
- Technology Transfer Fellow, 1995-1996

Honors and Awards

Technology Transfer Award, National Cancer Institute, 1996

Selected Publications

"Recent Elaboration of the Written Description Requirement in Patent Law," The Legal Intelligencer, February 6, 2003
Non-Patent Documents
- Co-Author, "Quality Indicators for Biotechnology Patents," Texas Lawyer, July 18, 2002
- "Federally Regulated Products May Qualify for an Exception to Patent Infringement," The Legal Intelligencer, Intellectual Property Supplement, December 18, 2000
- "Getting Commercial Funding for Your Academic Research," Science's Next Wave World Wide Web Site, AAAS, http://www.nextwave.org/colby.htm, 1996
- Co-Author, "Purification and Characterization of a Primary-Secondary Alcohol Dehydrogenase from Two Strains of Clostridium beijerinckii," J. Bacteriol. 175:5097-5105, 1993
- Co-author, "Purification and Properties of 3-Hydroxybutyryl-Coenzyme A Dehydrogenase from Clostridium beijerinckii ('Clostridium butylicum'), NRRL B593," Appl. Environ. Microbiol., 58:3297-3302, 1992
U.S. Patents (Representative Sample)
- 6,509,315: Didemnin analogs and fragments and methods of making and using them
- 6,432,986: Compositions, kits, and methods for inhibiting cerebral neurovascular disorders and muscular headaches
- 6,399,311: Compositions, kits, and methods for hydrodynamic stress-related regulation of gene expression
- 6,358,536: Nitric oxide donor compositions, methods, apparatus, and kits for preventing or alleviating vasoconstriction or vasospasm in a mammal
- 6,380,382: Gene encoding a protein having diagnostic, preventive, therapeutic, and other uses
- 6,333,153: Compositions, kits, and methods for effecting adenosine nucleotide modulated regulation of DNA mismatch recognition proteins
- 6,277,981: Method for design and selection of efficacious antisense oligonucleotides
- 6,177,403: Compositions, kits, and apparatus for delivery of a macromolecular assembly to an extravascular tissue of an animal
- 6,156,771: Method for alleviation of lower gastrointestinal disorders in a human patient
- 6,030,942: Peptides, peptide analogs, peptidomimetics, and other small molecules useful for inhibiting the activity of ribonucleotide reductase
- 6,025,502: Enantioselective synthesis of methyl phenidate
- 6,001,882: Photoactivated hypericin and the use thereof
Published U.S. Patent Applications (Representative Sample)
- US20020172998A1: 32612, a novel human peptide transporter and uses therefor
- US20020146698A1: Kits and methods for assessing oxidative stress
- US20020090353A1: Therapeutic modulation of the tumor inflammatory response
- US20020081611A1: ODC allelic analysis method for assessing carcinogenic susceptibility
- US20010052137A1: Axin domain-like polypeptide inhibitors of glycogen synthase kinase 3 beta activity and activators of wnt signaling
- US20010046976A1: Antimicrobial histone H1 compositions, kits, and methods of use thereof
- US20010004644A1: Compositions, kits, apparatus, and methods for inhibiting cephalic inflammation
PCT Applications (Representative Sample)
- WO 02/102980: Kits and methods for assessing leptin-mediated lipid metabolism
- WO 02/083117: Toluene sulfonamide-containing anti-tumor composition and method of use thereof
- WO 02/44331: DAP-kinase and HOXA9, two human genes associated with genesis, progression, and aggressiveness of non-small cell lung cancer
- WO 01/70260: CD18-binding antibodies inhibit stenosis-related disorders
- WO 01/51049: O-Methylated rapamycin derivatives for alleviation and inhibition of lymphoproliferative disorders
- WO 01/36657: Altered type IX collagen gene sequences associated with intervertebral disc disease
- WO 01/34167: Isolation and expansion of human marrow stromal cells
- WO 01/08123: Derivatized polyurethane compositions and methods of making
- WO 01/00788: Compositions, kits, and methods for modulating survival and differentiation of multi-potential hematopoietic progenitor cells
- WO 00/54795: Combined therapy with a chemotherapeutic agent and an oncolytic virus for killing tumor cells in a subject
- WO 00/41731: Reverse gene therapy
- WO 00/41732: Hydrogel compositions for controlled delivery of virus vectors and methods of use thereof
- WO 99/43360: Stable protection from dystrophic sarcolemmal degeneration and restoration of the sarcoglycan complex
- WO 99/43326: Use of a cardiac purinoceptor to effect cellular glucose uptake
- WO 99/42149: A graduated intraluminal catheter and methods of use thereof

Selected Speaking Engagements

Speaker, "Protecting Assets," Bio-entrepreneurship course in the Pharmaceutical Marketing MBA program at St. Joseph's University, June 1-2, 2007
"Incorporation by Reference in Patent Applications - Rules, Practices, and Pitfalls," Presentation at Akin Gump-Sponsored CLE Presentation, Philadelphia, November 2002
"Introduction to Intellectual Property Law," Course lecture for students and faculty of the Thomas Jefferson University technology transfer program, June 2002
"Introduction to Intellectual Property for Technology Transfer Professionals," Presentation to the faculty and staff of the University of Maryland Biotechnology Institute, May 2002
"Intellectual Property Issues in Sponsored Research Agreements," Presentation to the faculty and staff of the University of Maryland Biotechnology Institute, May 2002
"Update of Recent Case Law Relating to the Written Description Requirement of 35 U.S.C. § 112, First Paragraph," Presentation to the Philadelphia Intellectual Property Law Association, March 2002
"New Publication Rules at the U.S. Patent & Trademark Office," Presentation at Akin Gump-Sponsored CLE Presentation, Philadelphia, December 2001
"Introduction to Patents and Patenting Issues," Presentation to the research and development staff of West Pharmaceutical Services, Inc., January 2001