Richard A. Catalina, Jr. is a partner in the Princeton, N.J. office of Hill Wallack LLP. He is the partner in charge of the firm’s Intellectual Property practice group and is a member of the Life Sciences practice group. Mr. Catalina is a registered patent attorney (45,372) and Certified Licensing Professional™.
Mr. Catalina regularly advises clients in a wide array of intellectual property and patent-based matters, including searches and opinions as to patentability (novelty), non-infringement, freedom to operate, invalidity and enforceability. He also counsels clients on their intellectual property assets and strategies, including procurement, protection, enforcement and monetization. Mr. Catalina has successfully prosecuted numerous patent matters in a variety of technical arts before the U.S. Patent and Trademark Office.
Mr. Catalina is highly experienced in all aspects of trademark and trade dress protection, prosecution, registration, enforcement and litigation, including inter and ex partes proceedings and appeals before the Trademark Trial and Appeal Board of the USPTO (opposition and cancellation proceedings), concurrent use matters and agreements, prosecution and enforcement strategies.
Mr. Catalina also regularly participates in transactional matters involving intellectual property assets, conducting due diligence investigations and rendering professional legal opinions regarding the subject intellectual property. He has extensive experience representing clients in intellectual property licensing matters, including user licenses for SaaS and other cloud based platforms.
In Mr. Catalina’s pharmaceutical and life sciences practice, he counsels on various intellectual property and FDA issues and matters, including Hatch-Waxman strategies for brand and generic products. He has conducted sophisticated competitive analysis survey as to potential Section 505(j) ANDA generic entries (Paragraphs III and IV)and “paper NDAs” under Section 505 (b)(2), as well as comprehensive prior art and competitive pipeline landscape analyses.
Mr. Catalina is admitted to practice in New Jersey (1989), the U.S. District Court, District of New Jersey (1989) and U.S. Patent and Trademark Office (1999). He earned his J.D. from Syracuse University College of Law. He received his B.S. in Biology and Chemistry from Trenton State College (The College of New Jersey).Representative Matters
- Prosecuted and defended numerous intellectual property based litigation matters, including cases involving claims of patent infringement, trademark and trade dress infringement, false advertising and unfair completion
- Negotiated, drafted and closed hundreds of patent, software, pharmaceutical and technology licensing and joint venture matters with a strategic focus on maximizing asset value, protection and revenue
Presentations & Publications
- Counseled key management on competitor IP litigation, including challenges of validity and enforceability of pharmaceutical and bioactive NCEs and compositions
- Protection of trade secrets, maintaining confidentiality of proprietary information and innovation, cyber-security and data protection
- Presenter, Intellectual Property Basics for Startups and Entrepreneurs, September 2017
- Presenter, The Intersection of Software and Intellectual Property, September 2017
- Author, The Biologics Price Competition and Innovation Act: “Do You Wanna Dance?”, New Jersey Lawyer Magazine, August 2017
- Author, U.S. Supreme Court: Disparagement Clause of Lanham Act Violates First Amendment, LinkedIn, June 21, 2017
- Author, Plaintiff’s Law Firm Liable for Defense Legal Fees in Patent “Troll” Litigation, LinkedIn, January 11, 2017
- Author, Boise State University’s Trademark Grab, LinkedIn, September 12, 2016
- Author, Recent Revisions to the Trademark Manual of Examining Procedure (TMEP), LinkedIn, May 26, 2016
- Author, President Obama Signs Important Federal Trade Secrets Legislation, LinkedIn, May 13, 2016
- Interviewed, Managing Your Online Reputation, New Jersey Business magazine, April 2016