Rakesh H. Mehta Ph.D.

Counsel

Philadelphia
T +1.215.564.3023
F +1.215.568.3439

Overview

Rakesh Mehta focuses his practice on patent prosecution, litigation and opposition practice, as well as trademark prosecution and opposition. He has an extensive background in organic chemistry, chemical engineering, polymers, nanotechnology, membranes, particle science, catalysis, coatings, carbon fiber composites and textiles fibers. Rakesh also assists startup companies in reaching their full value and potential through advice and guidance. Fully dedicated to providing his clients with the counsel needed to develop and maintain successful business ventures, Rakesh collaborates with his clients to truly become part of their team. He builds deep and trusting client relationships, and he engages clients in meaningful ways, including meeting outside of traditional business hours, to provide the most effective and client-focused guidance possible.

Rakesh has language skills in Hindi and Gujarati and extensive knowledge of the business and legal environments of India. In 2013, Rakesh was one of only three lawyers invited by Delaware Governor Jack Markell on a trade mission to India to meet with prominent law firms, and he has been an invited guest at IP conferences in India for the past three years.

Select Experience

  • Oversees the U.S. and worldwide patent prosecution docket for a manufacturer of flexible packaging, which includes approximately 100 patents. Provides the client with freedom-to-operate, non-infringement and invalidity opinions, and other due diligence. Serves as primary IP counsel for the client.
  • Represents a Fortune 100 company in patent prosecution, opinion and opposition work. Previously served as a research scientist and then as a patent agent within the company, and eventually moved to serve as outside counsel. The work relates to materials, nanotechnology, polymers, and downstream bio-processes and applications, and includes prosecution, freedom-to-operate, invalidity, non-infringement opinions, and opposition challenges. During his time working with the company, Rakesh handled all patent work for a top scientist for a three-year period and served as outside counsel on a number of high-profile matters, including a matter involving an important docket that was subjected to opposition challenges in Europe, South Korea and Taiwan.
  • Originated patent prosecution and counseling work from a manufacturer of building envelopes and other construction materials such as sealants, adhesives and binders.
  • Performed due diligence on a company in which a biotechnology company ultimately invested about $200 million.
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Experience

  • Oversees the U.S. and worldwide patent prosecution docket for a manufacturer of flexible packaging, which includes approximately 100 patents. Provides the client with freedom-to-operate, non-infringement and invalidity opinions, and other due diligence. Serves as primary IP counsel for the client.
  • Represents a Fortune 100 company in patent prosecution, opinion and opposition work. Previously served as a research scientist and then as a patent agent within the company, and eventually moved to serve as outside counsel. The work relates to materials, nanotechnology, polymers, and downstream bio-processes and applications, and includes prosecution, freedom-to-operate, invalidity, non-infringement opinions, and opposition challenges. During his time working with the company, Rakesh handled all patent work for a top scientist for a three-year period and served as outside counsel on a number of high-profile matters, including a matter involving an important docket that was subjected to opposition challenges in Europe, South Korea and Taiwan.
  • Originated patent prosecution and counseling work from a manufacturer of building envelopes and other construction materials such as sealants, adhesives and binders.
  • Performed due diligence on a company in which a biotechnology company ultimately invested about $200 million.
  • Performed patent prosecution, strategy, agreement review and other miscellaneous work for technological- and scientific-based smaller companies.
  • Provided opinions and served as patent counsel in litigation for a phosphorus-based fertilizer manufacturing client. Recently prepared a series of non-infringement opinions for the client. Was involved in previous litigation for the same client, which included interpreting a key contract that had a patent component. Drafted sections of briefs, memos and counterclaims, and prepared several non-infringement opinions during litigation.
  • Served as a litigation team member in a trade secret matter pending in the Delaware Superior Court. The case relates to electrospun nanofibers technology in which the plaintiff alleged that the client misappropriated its trade secrets. Reviewed the technology, prepared defenses and trained witnesses.
  • Was involved in patent litigation in which he prepared the complaint, non-infringement contentions, invalidity contentions and due diligence in a patent infringement defense lawsuit. The invalidity contentions resulted in a favorable settlement for the client.
  • Was involved in contract litigation with a patent component against a Fortune 100 company, and prepared depositions, drafted sections of briefs involving patent issues, prepared expert witnesses, reviewed expert reports and affidavits, reviewed patents and participated in discovery issues.
  • Currently handling approximately 300 U.S. and foreign trademark files. In 2013, filed a trademark infringement complaint in the District Court for the District of New Jersey, as well as a preliminary injunction in the matter, with a favorable result.
  • Represents a handful of smaller IP and startup clients in efforts to realize their full potential. Represents a company that has a cancer treatment drug in its portfolio, and works with a senior pharmaceutical executive who plans to set up an entity that will incubate several startups.
  • With deep knowledge of the legal and business environments of India, as well as strong connections with the local Indian community, Rakesh has worked with clients of Indian origin on matters including contract review, employment issues and general business guidance. Recently advised a hospitality group on a variety of issues, including nuisance abatement.
Co-Inventor-Issued Patents and Publications
  • Method for Providing Nano-Structures of Uniform Length, S. Lustig, R. H. Mehta, et al., U.S. Patent #6,998,358 (assigned to DuPont Co.), February 2006.
  • Method for Providing Nano-Structures of Uniform Length, S. Lustig, R. H. Mehta, et al., U.S. Patent #6,946,410 (assigned to DuPont Co.), January 2006.
  • Hetero-Composite Yarn, Fabrics Thereof, and Methods of Making, G. D. Figuly, R. H. Mehta, et al., U.S. Patent #6,783,853 (assigned to E. I. du Pont de Nemours and Company), August 2004.
  • Stretchable Fibers of Polymers, Spinnerets to Form the Fibers, & Articles Produced Therefrom, G. D. Figuly, R. H. Mehta, et al., U.S. Patent #6,548,166 (assigned to E. I. du Pont de Nemours and Company), April 2003.
  • Magnetically Responsive Carbon Nano-Structures for Transporting Biologically Active Substances, and Methods Relating Thereto, R. H. Mehta, U.S. Patent Publication #20060024378, February 2006.
  • Preparation of Levulinic Acid Esters and Formic Acid Esters from Biomass and Olefins, Manzer, Mehta, et al., U.S. Patent Publication #20050118691, June 2005.
  • Hetero-Composite Yarn, Fabrics Thereof, and Methods of Making, G. D. Figuly, R. H. Mehta, et al., U.S. Patent Publication #20050008855 (assigned to E. I. du Pont de Nemours and Company), January 2005.
  • Preparation of Levulinic Acid Esters and Formic Acid Esters From Biomass and Olefins; Compositions Prepared Thereby; and Uses of the Compositions As Fuel Additives, Manzer, Mehta, et al., U.S. Patent Publication #20030233011, December 2003.
  • Stretchable Polymeric Fibers and Articles Therefrom, G. D. Figuly, R. H. Mehta, et al., U.S. Patent Publication #20020155290, October 2002.

Recognitions and Memberships

Memberships

  • American Intellectual Property Law Association: Mentoring Committee (2011 to present)
  • American Bar Association
  • Delaware State Bar Association
    • Multicultural Judges & Lawyers Section: Chair (2012 to 2013)
    • Nominating Committee (2012 to 2015)
  • South Asian Bar Association of Delaware: Executive Board Member (2011 to present)

Community

  • Delaware Breast Cancer Coalition: Board of Trustees (2012 to 2015)
  • DuPont Minority Counsel Conference (2011 to 2013): Planning Committee Member
  • DuPont Minority Counsel Network's Magazine Kaleidoscope (2010 to 2013): Editor
  • Phi Delta Phi Honor Society

Pro Bono

  • Has served – and continues to serve – as guardian ad litem to five children since 2008. In 2010, filed an appeal brief to the Delaware Supreme Court that resulted in a favorable outcome for the client.
  • Serves as trademark counsel for Andrew McDonough B+ Foundation, Delaware Breast Cancer Coalition (DBCC) and Trustees of Color.

Prior Positions

  • E.I. du Pont de Nemours and Company, Wilmington, Delaware: Research Scientist and Patent Agent (1997-2004)
  • Virginia Polytechnic Institute: Post-Doctoral Fellow in Organic Chemistry/Composites under the supervision of Dr. James E. McGrath (1996-1997)

Admissions

  • U.S. Patent and Trademark Office, Registration No. 50,224
  • Delaware
  • District of Columbia
  • [Not admitted in Pennsylvania]

Education

  • J.D., Widener University School of Law, 2004; Delaware Journal of Corporate Law, Articles Editor
  • Ph.D., Chemical and Materials Science, University of Kentucky, 1996; focus in polymers
  • M.S., Chemical Engineering, University of Kentucky, 1992; focus in particle science and surface chemistry
  • Bachelor of Technology, Chemical Engineering, National Institute of Technology, Warangal (India)

Languages

  • Gujarati
  • Hindi