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Kalpesh V. Upadhye

Associate

Kalpesh V. Upadhye, Ph.D., provides counseling to clients on all matters related to patent strategies. He helps clients with building and managing worldwide patent portfolios, drafting targeted claims, advising on trade secret issues, conducting due diligence analysis of patent portfolios, conducting patent landscape analysis, and providing patent validity and freedom-to-operate opinions. With a Ph.D. in bioengineering and a bachelor’s degree in physics, Kalpesh brings substantial scientific knowledge and a distinctive perspective for developing strategically important patent portfolios and creatively blends strategies used in technology and life sciences practices.

Kalpesh counsels domestic and international corporations, including several Fortune 100 companies, startups, and academic institutions. He has helped his clients obtain enforceable patents in a wide range of subject areas, including electronic and electromechanical components, semiconductor devices and processes, battery recycling, autonomous and semi-autonomous vehicles, wearable devices, microbiome-based diagnostics and therapeutics, cellular immunotherapy, drug delivery devices, biosensors, medical robotics, and biomaterials. He is adept at quickly understanding many technical areas and has a uniquely diverse practice.

Kalpesh serves on the Industry Advisory Board for the High Technology Committee within Licensing Executives Society International. He has been hosted by US and international business associations and entrepreneur classes to speak about intellectual property matters.

During his postdoctoral research, Kalpesh developed nonviral methods for nucleotide delivery into mammalian cells. Kalpesh’s doctoral thesis focused on the multiparametric investigation of mechanosensitive ion channels in mammalian cells and developing the tools required for such multiparametric investigation. Previously, Kalpesh developed MEMS-based point-of-care sensors for measuring cardiac markers in human blood for early diagnosis of myocardial infarction.

Kalpesh received his J.D. from the George Washington University Law School in 2019. Kalpesh has been a member of the patent bar since 2012. He is fluent in Hindi and Marathi.

  • A major pharmaceutical company in managing its international patent portfolio for drug delivery devices technology
  • A major electronic components manufacturer in prosecuting its patents applications 
  • A stealth-mode startup in the autonomous and semi-autonomous vehicles space in building a robust patent portfolio
  • A semiconductor equipment manufacturing company with its patent applications
  • A multinational corporation in drafting and prosecuting patents for its IoT-based patient monitoring systems
  • A biotechnology company in managing its international patent portfolio for microbiome analysis technology 
  • A cancer therapeutics company in managing its international patent portfolio relating to cell manufacturing technology 
  • The George Washington University Law School, 2019, J.D., with honors
  • University of Pittsburgh, 2010, Ph.D., Bioengineering
  • Indian Institute of Technology, 2002, B.Tech, Engineering Physics
  • District of Columbia
  • US Patent and Trademark Office

Member, Practice Group of the Year, Intellectual Property, Law360 (2019)

Member, American Bar Association

Member, American Intellectual Property Law Association (AIPLA)

Member, South Asian Bar Association (SABA)