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Kalpesh V. Upadhye

Associate

Kalpesh V. Upadhye, Ph.D, is a registered patent lawyer and an IAM Strategy 300 Global Leader. His practice is focused on intellectual property (IP) matters with an emphasis on obtaining and defending patents for his clients. Clients rely on Kalpesh to develop strategically placed and broadly applicable global patent portfolios for complex technologies. His proficiency lies in swiftly identifying patentable aspects of cutting-edge inventions at the intersection of life sciences, technology, and mobility, and understanding how patent infringement can be detected.

Kalpesh assists clients, ranging from Fortune 50 companies to start-ups and academic institutions, in building and managing worldwide patent portfolios by harvesting patentable inventions, drafting targeted claims, advising on trade secret issues, conducting due diligence, and providing patent validity and freedom-to-operate opinions. As an outside IP counsel for emerging companies, he crafts comprehensive IP strategies using patents, trade secrets, and trademarks and advises on licensing and joint research agreements.

Kalpesh enhances clients’ patent portfolios and market positions by strategically utilizing ex parte and adversarial procedures at the USPTO and supports patent litigation through claim construction, prosecution history review, fact investigation, and developing invalidity positions. With a Ph.D. in bioengineering and a bachelor's degree in physics, Kalpesh brings substantial scientific knowledge to patent matters, creatively blending strategies across technology and life sciences. His work spans drug delivery devices, medical instrumentation, implantable medical devices, biosensors, medical robotics, wearable devices biomaterials, machine learning and artificial intelligence (AI), electronic, electromechanical components, hardware and software for autonomous driver assistance systems, semiconductor devices and processes, lighting systems, battery recycling, genetics, gene therapy, bioinformatics, microbiome-based diagnostics and therapeutics, and cellular immunotherapy.

He has been hosted by US and international business associations and entrepreneur classes to speak about intellectual property matters.

Prior to joining Morgan Lewis and graduating law school, Kalpesh worked as a patent agent with another major general practice law firm. 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 battery recycling company, in developing a comprehensive IP strategy playbook utilizing a mix of patents, trade secrets, and trademarks and an evaluation process for determining strategically important inventions
  • A biotechnology startup, in developing and managing its patent portfolio related to novel RNA-based therapeutics
  • A biotechnology company, in managing families of strategic patents directed to biologics and manufacturing methods to maintain exclusivity and navigate emerging case law
  • A microbiome-based diagnostics company, in managing its international patent portfolio
  • A cancer therapeutics company, in managing its international patent portfolio relating to cell therapy products and manufacturing technology
  • An implantable medical device maker, with the Orange Book listing for the device and the underlying therapeutic
  • An autonomous and semi-autonomous landscaping vehicles startup, in building a robust IP portfolio
  • A major semiconductor manufacturer, in preparing and prosecuting patents relating to chip architecture, memory devices, metrology, and lithography equipment technology
  • A major electronic components manufacturer, in preparing and prosecuting patents relating to passive electronic components
  • A major pharmaceutical company, in managing its international patent portfolio for drug delivery devices technology
  • An infotainment systems manufacturer, in conducting a preemptive pre-suit investigation ahead of a potential patent infringement assertion at the ITC and district court
  • A major pharmaceutical company, in managing its international patent portfolio for drug delivery devices and aesthetic implants
  • 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

Recognized, Leading IP Strategist, IAM Strategy 300 (2024)

Member, Practice Group of the Year, Intellectual Property, Law360 (2019, 2024)

Member, American Bar Association

Member, American Intellectual Property Law Association (AIPLA)

Member, South Asian Bar Association (SABA)