Joe’s practice includes intellectual property due diligence, Patent Office appeals, preparation and prosecution of patent applications, and counseling on patent strategy, patent infringement and licensing issues. He represents clients in a wide range of technologies, including chemicals, polymers, pharmaceuticals, materials science, adhesives, coatings, composite materials, medical devices, semiconductor fabrication, and microelectromechanical system (MEMS) fabrication.
Joe was recognized as one of the “World’s Leading Patent Professionals” in the Intellectual Asset Management “IAM Patent 1000” publication from 2015 to 2018. He was also named a “Life Science Star” from 2013 to 2018 and 2022 to 2023 by LMG Life Sciences in recognition of the strength of his patent prosecution, strategy and portfolio management practice. He is recognized by both print and on-line news media for his experience relating to patent matters, and has been quoted numerous times, including by IPWatchdog, San Diego Daily Transcript, Orange County Business Journal, Milwaukee Wisconsin Journal Sentinel, Law360, Healthline and InsideCounsel.
He has presented numerous speeches to legal and technical organizations, including AIPLA and participants in the Biotechnology/Chemical/Pharmaceutical Partnership at the U.S Patent Office. He has also provided technical training to U.S. Patent Examiners in the Patent Examiner Technical Training Program.
After completing graduate school, Joe worked for seven years as a research scientist in the aerospace and chemical industries. His research resulted in numerous publications and patents and focused on chemical and polymer syntheses and manufacturing, liquid crystals, composite materials, rubbers, adhesives, coatings, biomedical polymers, and water-soluble polymers.
In 1995, Joe joined the Patent Law Department at a major specialty chemicals and materials technology company, as a patent agent and began attending law school in the evenings. He graduated from law school and became Patent Counsel at the company in 1999.
Joe joined the firm in 2000 and became a partner in 2006.
Pace University School of Law, J.D.
University of Massachusetts, Ph.D., Polymer Science & Engineering, Ph.D. research involved synthesis and characterization of liquid crystal monomers and polymers, resulting in eight publications
University of Massachusetts, M.S., Polymer Science & Engineering
University of Connecticut, B.S., Chemistry
State Bar of California
U.S. Patent and Trademark Office
Biotech
Synthetic Biology & Nanotechnology
Chemical, Industrial & Materials
Energy
Medical Devices & Procedures
Pharmaceuticals
Advertising, Media & Entertainment Practice
Copyright
Due Diligence
IP Strategy
IP Transactions, Agreements & Venture Capital
Litigation
Opinions & Counseling
Patent Strategy & Prosecution
Patent Trial & Appeal Board (PTAB) Trials (Post Grant)
Post-Grant Review (PGR)
U.S. Patent Prosecution
Joe has received multiple awards and has been honored in both national and international forums for his legal accomplishments:
- Recognized for high achievement in Patent Prosecution in Patexia’s “2024 Patexia Patent Prosecution Intelligence Report“ (2024)
- Recognized as one of the “World’s Leading Patent Professionals” in the Intellectual Asset Management (IAM) “Patent 1000” publication from 2015 to 2019 for Prosecution. In the 2018 guide, Dr. Mallon was recognized for his experience in the aerospace and chemical industries and for “taking the lead in obtaining NASH patent portfolio for Nitto Denko, which was licensed to Bristol-Myers Squibb for $100 million”. In 2017, he was described by one client as “the single most effective attorney [they’ve] ever engaged in [their] 25 years in intellectual property.”
- Named a “Life Science Star” by Legal Media Group (LMG) publication from 2013 to 2018 and 2022 to 2024. Dr. Mallon was noted for making a name for himself on the non-contentious side of the IP industry and was praised for his deep understanding of the technology and attitude towards the industry. He was recognized for his patent prosecution, patent advisory, strategy and management practice, specifically for combination products, drug delivery devices, drug formulations, macromolecules and new chemical entities. In 2016, he was recognized for his work in the areas of antibiotics, antiviral drugs, biofuels, cardiovascular devices, pharmaceuticals, and polymers. In 2017, he was recognized for his extensive experience in prosecution and counseling for the pharmaceutical and medical device industries. In 2018 and 2022, Dr. Mallon was once again recognized for Patent Stategy & Management.
- Recognized in The Legal 500 “United States 2015” as being an outstanding practitioner. In this guide, Dr. Mallon was noted for his patent licensing and transactional work.
- American Intellectual Property Law Association (AIPLA)
- San Diego Intellectual Property Law Association (SDIPLA)
- American Chemical Society (ACS)
