Deborah L. Lu, Ph.D.

Partner

  • Deborah L. Lu, Ph.D.
  • Phone: +1 212 692 1026

    Import to Address Book

  • Duane Morris LLP
    1540 Broadway
    New York, NY 10036-4086
    USA
  • Duane Morris LLP
    230 Park Avenue, Suite 1130
    New York, NY 10169-0079
    USA

Deborah L. Lu, Ph.D. practices in the area of intellectual property law with a focus on preparation and prosecution of patent applications. Dr. Lu obtains and evaluates intellectual property protection, manages complex patent portfolios and counsels clients regarding validity, freedom-to-operate and patentability in biotechnology and pharmaceuticals. She is involved in both ex parte and inter partes reexaminations and interferences, and also negotiates transactions involving intellectual property issues such as licenses and agreements.

Dr. Lu is a 2004 graduate of Fordham University School of Law. She earned Ph.D. and M.S. degrees in Biological Chemistry from the University of Michigan and a B.S. in Biological Sciences with a concentration in Biochemistry from Cornell University.

Areas of Practice

  • Intellectual Property

  • Patent Preparation and Prosecution

Admissions

  • New York
  • U.S. Patent and Trademark Office (USPTO)
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York
  • U.S. Court of Appeals for the Federal Circuit

Education

  • Fordham University School of Law, J.D., 2004
  • University of Michigan, Ph.D., Biological Chemistry, 1996
  • University of Michigan, M.S., Biological Chemistry, 1992
  • Cornell University, B.S., Biological Sciences, 1990

Experience

  • Duane Morris LLP
    - Partner, 2018-present

  • Vedder Price P.C.
    - Shareholder, 2010-2018

  • Frommer Lawrence & Haug LLP
    - Associate, 2005-2010

Professional Activities

  • Future Medicinal Chemistry
    - Peer Reviewer

  • Faculty, Practising Law Institute

  • Faculty, American Conference Institute

  • New York Intellectual Property Law Association

  • Pharmaceutical Patent Analyst
    - Member, Editorial Board

  • BNA Life Sciences Law & Industry Report
    - Member, Editorial Advisory Board

  • Polytechnic Institute of NYU
    - Adjunct Professor, 2013-2015

  • Protein Sciences Corporation Advisory Board, 2012-2017

  • Bloomberg BNA Life Sciences Law & Industry Report (LSLR)
    - Editorial Advisory Board, 2011-present

  • Pharmaceutical Patent Analyst
    - Editorial Board, 2011-present

  • Future Medicinal Chemistry
    - Peer Reviewer, 2010-present

  • Practising Law Institute
    - Faculty, 2008-present

  • American Conference Institute
    - Faculty, 2007-present

Honors and Awards

  • Listed in World Intellectual Property Review (WIPR) Leaders Directory, 2022-2024
  • Ranked in Patexia's 4th Annual Patent Prosecution Intelligence Report as a top 10 attorney in Patent Prosecution, 2022

Selected Publications

Selected Speaking Engagements

  • Speaker, "Patent Fundamentals Bootcamp 2023: An Introduction to Patent Drafting, Prosecution, and Litigation," Practising Law Institute, September 12, 2023
  • Speaker, "Pro Bono Poll Watching," American Bar Association Pro Bono Committee Webinar, July 20, 2023
  • Speaker, "An Overview of Patent Prosecution," PLI Patent Fundamentals Bootcamp 2022: An Introduction to Patent Drafting, Prosecution, and Litigation," September 14, 2022 
  • Clinician, "Clinic II: Patent Amendment Writing, PLI Patent Fundamentals Bootcamp 2022: An Introduction to Patent Drafting, Prosecution, and Litigation," September 14, 2022 
  • Moderator, "The 3 Pillars of Your IP Strategy: Innovation, Prosecution, and Portfolio Management," Centerforce Women in Law IP Summit, June 15, 2022
  • Speaker, "Protecting CAR-T and other Immunotherapies: In-House Challenges," LSPN North America Spring Conference, May 12, 2022
  • Opening Remarks, 20th Advanced Summit on Life Sciences Patents Conference, June 2, 2022
  • Speaker, "Odds and Sods – The Importance of Plant Inventions to Everyday Life," Intellectual Property Law Committee, Nassau County Bar Association, September 23, 2021
  • Speaker, "Advanced Patent Prosecution Workshop 2021: Claim Drafting & Amendment Writing," Practising Law Institute, Webinar, July 6, 2021
  • Presenter, "Patent Amendment Writing," Practising Law Institute's Patent Fundamentals Bootcamp 2021, June 3, 2021
  • Moderator, "Tensions Between Nonobviousness and Written Description in U.S. Patent Law," Duane Morris LLP, Webinar, October 27, 2020
  • Speaker, "18th Advanced Summit on Life Science Patents," American Conference Institute, New York, August 4-6, 2020
  • Speaker, "Advanced Patent Prosecution Workshop 2020: Claim Drafting & Amendment Writing," Practising Law Institute, Webinar, July 8, 2020
  • Speaker, "US Patent-Eligible Subject Matter – Latest Thinking," Chartered Institute of Patent Attorneys (CIPA), Webinar, July 2, 2020
  • Speaker, "Entering the U.S. Market for European Pharma: Essential IP and Regulatory Considerations," Duane Morris Webinar, June 23, 2020
  • Clinician, "Patent Fundamentals Bootcamp 2020: An Introduction to Patent Drafting, Prosecution, and Litigation," Practising Law Institute Webinar, June 2-4, 2020
  • Speaker, "How COVID-19 Is Affecting Life Sciences and Medical Technologies," Duane Morris Webinar, April 16, 2020
  • Speaker, "Patent Amendment Writing," Patent Fundamentals Bootcamp 2019: An Introduction to Patent Drafting, Prosecution, and Litigation, Practising Law Institute, June 13, 2019

  • Speaker, "An Overview of Patent Prosecution," Patent Fundamentals Bootcamp 2019: An Introduction to Patent Drafting, Prosecution, and Litigation, Practising Law Institute, June 13, 2019

  • Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2018: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 11-12, 2018

  • Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2018: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 13-15, 2018

  • Speaker, “Updates from the U.S.,” Chartered Institute of Patent Attorneys (CIPA)’s 2018 East of England Meeting, Cambridge, UK, March 15, 2018

  • Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2017: Claim Drafting & Amendment Writing, Practising Law Institute, , New York, July 25-26, 2017

  • Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2017: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 14-16, 2017

  • Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2016: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 14-15, 2016

  • Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2016: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 15-17, 2016

  • Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2015: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 16-17, 2015

  • Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2015: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 15-17, 2015

  • Speaker, “Focus on Antibodies: Understanding Current § 112 Standards for Written Description,” Advanced Forum on Life Sciences Patents, American Conference Institute, New York, January 13-14, 2015

  • Speaker, “Workshop: Combating Gender Stereotypes in the Life Sciences Legal Community: Open Forum and Working Group on Overcoming Implicit Bias,” Women Leaders in Life Sciences Law, American Conference Institute, Boston, July 28–29, 2014

  • Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2014: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 17-18, 2014

  • Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2014: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 11-13, 2014

  • Speaker, “35 U.S.C. 103 and the Court of Appeals for the Federal Circuit (CAFC),” Prior Art and Obviousness 2014: Current Trends in Sections 102 and 103, Practising Law Institute, New York, May 8, 2014

  • Speaker, “Protecting Intellectual Property Rights by Enforcing Patent Rights Abroad and Understanding the Impact of Judicial Determinations by Foreign Courts,” Advanced Forum on Managed Patent Litigation, American Conference Institute, New York, December 10-11, 2013

  • Speaker, “Exploring the Decision in the Bowman v. Monsanto Case. Global Patenting Strategy and Practice,” Crops & Chemicals USA 2013: Plant Biotechnology, Raleigh, North Carolina, August 7-8, 2013

  • Speaker, “Managing Unique Challenges and Investigating Emerging Trends in Foreign Patent Litigation,” Global Patenting Strategy and Practice, American Conference Institute, New York, July 15-16, 2013

  • Speaker, “Working Group Session: Assessing the Impact of New PTO Procedures under the AIA on Paragraph IV Litigation,” Paragraph IV Disputes, American Conference Institute, New York, May 7-8, 2013

  • Speaker, “Advanced Patent Prosecution Issues: Chemical/Pharmaceutical,” Advanced Patent Prosecution Workshop 2012: Claim Drafting & Amendment Writing, Practising Law Institute, New York, July 19-20, 2012

  • Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2012: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 13-16, 2012

  • Speaker, “Working Group Session: Assessing the Impact of New PTO Procedures under the AIA on Paragraph IV Litigation,” Paragraph IV Disputes, American Conference Institute, New York, April 24-25, 2012

  • Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 15-17, 2011

  • Speaker, “Using A-Delays, B-Delays and C-Delays to Your Advantage,” The Life Sciences Lawyer’s Guide to Patent Term Adjustment and Patent Term Extensions, American Conference Institute, New York, January 26-27, 2011

  • Speaker, “Amendment Clinic,” Fundamentals of Patent Prosecution 2010: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 16-18, 2010

  • Speaker, “Patent Prosecution,” Fundamentals of Patent Prosecution 2008: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, New York, June 18-20, 2008

  • Speaker, “Perfecting Claim Drafting and Prosecution in Life Sciences Patent Applications,” Pharma/Biotech Patent Claim Drafting & Prosecution, American Conference Institute, New York, February 27, 2008

  • Speaker, “Life Sciences Patents: What is Patentable?” Pharma/Biotech Patent Boot Camp Basic Training in Core IP and Related Regulatory Competencies for the Life Science Industries, American Conference Institute, San Francisco, September 18-19, 2007

  • Speaker, “The "Win-Win" Collaborative Agreement: Ethical and Practical Negotiating and Drafting Strategies,” Structuring, Negotiating and Managing Win-Win Pharma and Biotech Collaborative Agreements, American Conference Institute, San Francisco, July 16-18, 2007

  • Speaker, “Life Sciences Patents: What is Patentable?” Pharma/Biotech Patent Boot Camp Basic Training in Core IP and Related Regulatory Competencies for the Life Science Industries, American Conference Institute, New York, June 21-22, 2007

  • Speaker, “Key Agencies Overview: Understanding the Jurisdiction and Interplay of the FDA and PTO in the Patenting of Drugs and Biologics,” Pharma/Biotech Patent Boot Camp Basic Training in Core IP and Related Regulatory Competencies for the Life Science Industries, American Conference Institute, New York, June 21-22, 2007

Representative Matters

  • Delivered one of the first post-pandemic live oral arguments at the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) on behalf of Rijk Zwaan, a vegetable breeding company, in connection with the patentability of a new hybrid celery. The PTAB reversed the USPTO examiner and held that client’s new hybrid celery is adequately described by the biological deposit of seed along with the description in the patent application and that the hybrid celery is nonobvious (patentable).