Donald H. Heckenberg, Jr.

Partner
Donald Heckenberg

Don Heckenberg’s practice includes patent application preparation and prosecution, representing clients in post-grant proceedings before the U.S. Patent & Trademark Office, strategic management of patent portfolios, due diligence investigations, and opinion work. Don has particular skill in complex prosecution proceedings before the USPTO, including reissue applications, reexaminations, and supplemental examination.

Don represents clients in chemical, mechanical, and computer-related arts. Some of the diverse technologies that he has  experience with include small-molecule drugs, medical devices, vehicle emission technologies, polymers, papermaking, toner cartridges for laser beam printers, dental technology, and software.

Before starting in private practice, Don worked for seven years as an examiner at the USPTO. He examined applications directed molding and shaping of polymeric materials.

Experience

Government Experience

  • Primary Examiner, United States Patent and Trademark Office

Representative Matters

  • Secured patents for Canon, Inc. involving toner cartridges for laser printers. The patents were subsequently enforced in proceedings before the International Trade Commission
  • Represented AstraZeneca in a reissue patent application covering its blockbuster drug BRILINTA®
  • Represented Johnson Matthey Inc. in inter partes reexamination proceedings before the United States Patent & Trademark Office’s Patent Trial and Appeal Board
  • Drafted patent applications for Georgia-Pacific covering its innovative papermaking technology
  • Represented Medtronic, Inc. in multiple inter partes reexaminations and inter partes reviews involving nerve detection technology

Representative Clients

  • AstraZeneca
  • Canon
  • Dentsply Sirona
  • Georgia-Pacific
  • Gilead
  • Johnson Matthey
  • Medtronic
  • S.C. Johnson & Son

Insights

Credentials
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Education

  • J.D. cum laude American University, Washington College of Law 2005
  • B.S. Chemical Engineering Northwestern University 1999

Bar Admissions

  • District of Columbia
  • Virginia
  • U.S. Patent and Trademark Office

Professional Memberships and Activities

  • Member, American Intellectual Property Law Association
  • Member, American Chemical Society

Community
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Pro Bono

  • Represented clients in immigration proceedings. Don also actively represents non-profit 501(c) organizations before the U.S. Patent & Trademark Office.