Dianna Goldenson El Hioum - Law Firm Merchant & Gould Attorneys Minneapolis, Minnesota

212.223.6656 | Email | vCard | Biography

New York Office
767 Third Avenue
23^rdFloor
New York, NY 10017

ph: 212.223.6520
fax: 212.223.6521

Assistant:

Randall Douglas
rdouglas@merchantgould.com
212.223.6522

Dianna Goldenson El Hioum is a partner specializing in global patent prosecution and opinion work, primarily in the pharmaceutical, chemical, and firearms industries. She has successfully counseled clients on a variety of issues, including reexaminations, licensing (involving drafting and negotiation as well as dispute resolution), freedom to operate investigations, and assessment of non-infringement, invalidity, patentability, and enforceability issues. For clients in the pharmaceutical and biotechnology industries, Ms. El Hioum offers considerable expertise on topics related to the Hatch-Waxman Act, including patent term extension, Orange Book listings, and Paragraph IV notice letters. Prior to joining Merchant & Gould, Ms. El Hioum was a principal at Darby & Darby. Before starting her legal career, she worked in large scale drug manufacturing and development at Amgen.

Education

Massachusetts Institute of Technology
B.S., Chemistry, 1995

Boston College Law School
J.D., 2002, cum laude

Bar Admissions

Massachusetts, 2002
New York, 2003
U.S. Patent and Trademark Office, 2002
United States District Court, Southern District of New York, 2010
United States District Court, Eastern District of New York, 2010

Publications

"Global-Tech Appliances, Inc. v. SEB S.A., Induced Infringement: Willful Blindness Can Satisfy Knowledge Requirement," The Edge: M&G's Intellectual Property White Paper, July 2011.

"Microsoft Corp. v. i4i Ltd. Partnership: Standard of Proof for Patent Invalidity Remains Clear and Convincing Evidence," The Edge: M&G's Intellectual Property White Paper, June 2011

A Day Late And A Few Million Dollars Short
Nature Biotechnology, 27(6):538-41 (2009)

FOIA Exemption Five: Will it Protect Government Scientists from Unfair Intrusion?
Boston College Environmental Affairs Law Review, 25:2, 311-42 (2002)

Isolation and Characterization of a Mammalian Homolog of the Drosophila White Gene
Gene, 185:77-85 (1997)
Co-authored with J.M. Croop, G.E. Tiller, J.A. Fletcher, M.L. Lux, E. Raab, D. Son, S. Arciniegas,
R.L. Wu

Press Releases

September 2009 - United States Senator Writes to USPTO Director and FDA Commissioner to Resolve the Problem of Miscalculated Patent Term Extension Deadlines After Reading Related Article by Dianna Goldenson

April 2009 - Preliminary Injunction Motion Successfully Defeated in False Advertising Case

Speaking Engagements

"Advanced Patent Prosecution Workshop 2011: Claim Drafting & Amendment Writing Workshop," Practicing Law Institute, New York, July 2011

"The Impact of Therasense v. Becton on the Doctrine of Inequitable Conduct," LexisNexis CLE, New York, June 2011