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Kalpesh V. Upadhye

Associate

Kalpesh V. Upadhye, Ph.D., is a registered patent lawyer with a decade of experience in drafting and prosecuting patent applications, focused on intellectual property (IP) matters with an emphasis on obtaining and defending patents. He helps clients with building and managing patent portfolios, drafting targeted claims, advising on trade secret issues, assessing patentability, and analyzing freedom-to-operate, infringement, and invalidity issues. Kalpesh also conducts due diligence analysis of patent portfolios in relation to mergers, acquisitions, and other transactions. His clients include domestic and international corporations, startups, and universities.

Extended Profile

Prior to joining Morgan Lewis, Kalpesh worked as a patent agent at an IP boutique and another international general practice law firm. With a strong science and technology background, he counsels clients with a wide variety of subject area focus. In technology, Kalpesh has experience in natural language processing, medical image processing, telecommunications, navigation systems, autonomous and semi-autonomous vehicle systems, and Internet of Things (IoT) based patient monitoring systems.

In material science and engineering, Kalpesh has successfully prosecuted patents relating to semiconductors, photovoltaics, electronic and electromechanical components, lighting systems, batteries, engineered materials, bulk metallic glasses, meta materials, magnetoresistive materials, and superconductors.

In life sciences, he drafts and prosecutes patents relating to cancer therapeutics, microbiome analysis and diagnostics, biosensors, biomaterials, drug delivery, and medical devices.

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.

Selected Representations

  • 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 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 

Education

  • 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

Admissions

  • District of Columbia
  • US Patent and Trademark Office

Awards and Affiliations

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)

Publications