Richard A. Catalina, Jr. - Intellectual Property, Life Sciences & Technology Attorney

Richard A. Catalina, Jr.
Phone: 732.855.6130
Fax: 732.726.6530
Bar Admission:

U.S. Patent and Trademark Office, 1999
New Jersey, 1989
U.S. District Court District of New Jersey, 1989

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Education:

J.D., Syracuse University College of Law, 1989
B.S., Trenton State College (The College of New Jersey), 1983

Biographical Information:

"We’re going to aggressively protect our intellectual property. Our single greatest asset is the innovation and the ingenuity and creativity of the American people. It is essential to our prosperity.” – Barack Obama (2010)

Navigating the complex maze of intellectual property rights has never been more challenging. With a legal landscape that is changing nearly as fast as advances in innovation, guidance from knowledgeable counsel is more critical than ever.

Richard A. Catalina, Jr., Counsel with Wilentz, Goldman & Spitzer P.A., has been assisting clients meet those challenges for almost 27 years. A registered patent attorney with the United States Patent and Trademark Office, Richard has prosecuted numerous patents in diverse technical fields and regularly counsels clients on their intellectual property assets and strategies, including procurement, protection, enforcement and monetization.

Formally educated in the life sciences (biology and chemistry) and trained in computer and software technologies, Richard brings strong analytical skills to critically assess demanding complex legal problems and formulate collaborative based solutions that advance the business objectives of his clients. He has 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. In addition to counseling clients in all aspects of intellectual property and technology law, Richard has 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 competition.

Richard has established a niche pharmaceutical and life science counseling practice regarding various intellectual property and FDA issues and matters, including Hatch-Waxman strategies for brand and generic products. He has conducted sophisticated competitive analysis surveys 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. Richard has further counseled key management on competitor IP litigation, including challenges of validity and enforceability of pharmaceutical and bioactive NCEs and compositions, and has further authored search reports directed towards invalidation, freedom to operate, and novelty (patentability).

As part of his patent practice, Richard has successfully prosecuted numerous patent applications in diverse technical arts, and regularly counsels clients in a wide array of patent-based matters, including searches and opinions as to patentability (novelty), non-infringement, freedom to operate, invalidity and enforceability. Working with corporate counsel, Richard also regularly participates in transactional matters involving intellectual property assets, conducting due diligence investigations and rendering professional legal opinions regarding the subject intellectual property.

Richard 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 United States Patent and Trademark Office (opposition and cancellation proceedings), concurrent use matters and agreements, prosecution and enforcement strategies.

Richard also regularly counsels clients as to the protection of trade secrets, maintaining confidentiality of proprietary information and innovation, cyber-security and data protection.

Prior to re-joining the firm, Richard practiced at the boutique intellectual property law firm of Catalina & Associates, A Professional Corporation, with offices in Shrewsbury and Princeton, New Jersey and New York, New York and where he serviced as managing attorney. As a junior lawyer at Wilentz, Richard honed his legal skills in a variety of areas including complex commercial litigation and aided in establishing the firm’s environmental law practice.

Past and Present Professional Affiliations:

International Trademark Association, Licensing Executives Society of North America, the American Intellectual Property Law Association, the American Bar Association (Intellectual Property Law Section), New Jersey Intellectual Property Law Association, Monmouth County and New Jersey State Bar Associations (Intellectual Property Law Section, Internet and Computer Law Committee and Technology Committee), New Jersey Technology Council, BioNJ (formerly, the Biotechnology Council of New Jersey), Intellectual Property Owners Association.