John W. Rooney

John W. Rooney, Ph.D., J.D. -- USPTO-Registered Patent & Trademark Attorney, College Professor



Attorney John W. Rooney, Ph.D. is admitted to the Massachusetts State Bar and the U.S. District Court, District of Massachusetts, and is registered with the U.S. Patent and Trademark Office as a U.S. Patent Attorney.  He holds degrees from University of California, Berkeley (B.A., Molecular Biology) and Harvard University (Ph.D., Genetics).  Prior to becoming an attorney, Dr. Rooney worked as a drug development scientist for multiple biotech and pharmaceutical companies. While in law school he interned at Fletcher Allen Health Care, Burlington, Vermont, under the Offices of Integrity and Compliance, Risk Management, and General Counsel.  His practice now focuses on Patent, Trademark, and Theft of Trade Secrets litigation in Federal Court.  He is with Aquilla Patents & Marks, PLLC.


 

John W. Rooney Bar Admissions:

John W. Rooney as been admitted and licensed to practise law by:

  • State of Massachusetts
  • United States District Court, District of Massachusetts
  • USPTO-Registered Patent Attorney


John W. Rooney Memberships:

John W. Rooney is  a member of, or is registered with,  the following organizations:

  • Member, Massachusetts Bar Association (MBA)
  • Member, Boston Patent Law Association (BPLA)
  • Member, American Intellectual Property Law Association (AIPLA)
  • Member, Patent Information Users Group (PIUG)
  • Registered Patent Attorney, United States Patent and Trademark Office (USPTO)

 

 

John W. Rooney Continuing Legal Education (CLE) and Symposia:


Boston Patent Law Association (BPLA), 06/19/2012:  “BPLA Welcomes BIO2012: Biotech and Pharma IP Forum”

 

Practising Law Insitute (PLI), 06/13/2012:  “Fundamentals of Patent Prosecution 2012: A Boot Camp for Claim Drafting & Amendment Writing (NYC).”

 

American Intellectual Property Law Association (AIPLA), 05/30/2012:  “Examiner Interviews 101 – Strategies on How to Make the Most of Your USPTO Interview and Get Your Patent Issued.”

 

Boston Patent Law Association (BPLA), 05/09/2012:  “Patentability of Diagnostic Methods: The European Perspective Post-Mayo.”

 

Boston Patent Law Association (BPLA), 03/5/2012:  “BPLA Reception for the USPTO’s AIA Roadshow in Boston.”

 

USPTO, 03/05/2012:  “USPTO’s AIA Roadshow in Boston.”

 

Boston Patent Law Association (BPLA), monthly:  “Monthly Meeting of the Biotech Case Law Club.”

 


John W. Rooney Awards:


Academic Excellence Award, Vermont Law School, 2008

 

Dean’s List, Vermont Law School, 2008

 

 

NIH Arteriosclerosis training grant (T32-HL07343), 2000-2001

 

Postdoctoral Fellowship Award, Cancer Research Institute, New York, NY, 1996-1999

 

Traveling Scholar Research Award, Tularik, Inc., South San Francisco, CA, 1994-1995

 

National Research Service Award, 1992-1995

 


John W. Rooney Publications:


Postel, E. H., Berberich, S. J., Rooney, J. W., and Kaetzel, D. M. (2000).  Human NM23/Nucleoside Diphosphate Kinase regulates gene expression through DNA binding to nuclease-hypersensitive transcriptional elements.  J. Bioenergetics and Biomembranes 32(3): 277-284.

 

Rooney, J. W., Postel, E. H., and Calame, K. L.  (1999).  Proc. 3rd Intern. Congr. Genet. Biochem. Physiol. Nm23/Nucleoside Diphosphate Kinase.  University of Bordeaux2, France, 20-22.  September 1999, Absh. P15.

 

Ho, I.-C., Kim, John H.-I., Rooney, J. W., Spiegelman, B. M., and Glimcher, L. H.(1998). A potential role for the nuclear factor of activated T cells family of transcriptional regulatory proteins in adipogenesis. Proc. Natl. Acad. Sci. USA 95, 15537-15541.

 

Ho, I.-C., Hodge, M. R., Rooney, J. W., and Glimcher, L. H. (1996). The proto-oncogene c-maf is responsible for tissue-specific expression of interleukin-4. Cell 85, 973-983.

 

Rooney, J. W.  (1995).  Regulation of the Interleukin-2 and Interleukin-4 genes in T helper 1 and T helper 2 cell clones.  Doctoral Thesis, Harvard, Dept of Genetics.

 

Rooney, J. W., Sun, Y.-L., Glimcher, L. H., and Hoey, T. (1995). Novel NF-AT sites that mediate activation of the IL-2 promoter in response to T cell receptor stimulation. Mol. Cell. Biol. 15, 6299-6310.

 

Rooney, J. W., Hoey, T., and Glimcher, L. H. (1995). Coordinate and cooperative roles for NF-AT and AP-1 in the regulation of the murine IL-4 gene.  Immunity 2, 473-483.

 

Rooney, J. W., Hodge, M. R., and Glimcher, L. H. (1995). The proximal promoter of the IL-4 gene is composed of multiple essential regulatory sites which bind at least two distinct factors. J. Immunol. 154, 6397-6405.

 

Rooney, J. W., Hodge, M. R., McCaffrey, P. G., Rao, A., and Glimcher, L. H. (1994). A common factor regulates both Th1 and Th2 specific cytokine  gene expression. EMBO J. 13, 625-633.

 

Reimold, A. M., Kara, C. J., Rooney, J. W., and Glimcher, L. H. (1993). Transforming Growth Factor Beta-1 Repression of the HLA-DRalpha gene is mediated by conserved proximal promoter elements. J. Immunol. 151, 4173-4182

 

Eisenmann, D. M., Arndt, K. M., Ricupero, S. L., Rooney, J. W., and Winston, F. (1992). SPT3 interacts with TFIID to allow normal transcription in Saccharomyces cerevisiae. Genes & Dev. 6, 1319-1331

 

Miller, C. L., Feldhaus, A. L., Rooney, J. W., Rhodes, L. D., Sibley, C. H., and Singh, H. (1991). Regulation and a possible stage-specific function of Oct-2 during pre-B-cell differentiation. Mol. Cell. Biol. 11, 4885-4894.

 

Rooney, J. W., DuBois, P., and Sibley, C. H. (1991). Cross-linking of surface IgM activates NF-kappa B in B lymphocyte. Eur. J. Immunol. 21, 2993-2998.

 

Bomstzyk, K., Rooney, J. W., Twasaki, T., Rachie, N. A., Dower, S. K., and Sibley, C. H. (1991). Evidence that interleukin-1 and phorbol esters activate NF-kappa B by different pathways: role of protein kinase C. Cell Regulation 2, 329-335.

 

Bomsztyk, K., Toivola, B., Emery, D. W., Rooney, J. W., Dower, S. K., Rachie, N. A., and Sibley, C. H. (1990). Role of cAMP in interleukin-1-induced kappa light chain gene expression in murine B cell line. J. Biol. Chem. 265, 9413-9417.

 

Rooney, J. W., Emery, D. W., and Sibley, C. H. (1990). 1.3E2, a variant of the B lymphoma 70Z/3, defective in activation of NF-kappa B and OTF-2.  Immunogenetics 31, 73-78.

 

Rooney, J. W., Emery, D. W., and Sibley, C. H. (1990). Slow response variant of the B lymphoma 70Z/3 defective in activation in LPS activation of NF-kappaB. Immunogenetics 31, 65-72.

 

Emery, D. W., Rooney, J. W., and Sibley, C. H. (1989). A gamma interferon-unresponsive variant of cell line, 70Z/3, IFN-4, can be partially rescued by phorbol myristate acetate. Mol. Cell. Biol. 9, 5231-5233.

 

John W. Rooney's Background

John W. Rooney's Experience

Associate Attorney at Aquilla Patents & Marks, PLLC

July 2012 - Present | Center Harbor, NH

Patent and Trademark Litigation and Prosecution. Trade Secret Litigation.

Associate Professor (Adjunct) at Franklin Pierce University, The College of Graduate & Professional Studies

December 2011 - Present | Portsmouth, NH

Teaching IC112 and IC113, "The Sciences: An Integrated Approach."

Academic Consultant and Course Content Reviewer at The Saylor Foundation

November 2011 - Present | Washington, D.C.

Course Content Designer and Reviewer--Biological Sciences, Law

Associate Professor (Adjunct) at Community College System of New Hampshire (CCSNH), Departments of Paralegal Studies, Biological Chemistry

July 2010 - Present | Concord, NH

Courses taught (live): Anatomy and Physiology I and II (with labs). Courses designed/taught (hybrid) for the ABA-accredited Legal Nurse Consultatnt Certification Progam: LNC102, Legal Ethics; LNC105, Risk Management.

Associate Professor (Adjunct) at Hesser College, Departments of Legal Studies, Medical Assisting, and Liberal Arts

March 2009 - March 2010 | Manchester, NH

Courses taught (live): Business Law, Critical Thinking Workshop, Conflict Resolution, Medical Ethics and Law, Anatomy and Physiology I and II, Advanced Human Biology, Biology of the Human Body.

Research Associate at Dartmouth College, Department of Physiology

May 2008 - March 2009 | Lebanon, NH

Project: Investigating the role of transcriptional co-activators and chromatin remodeling in steroid hormone-regulated gene expression in breast cancer cells. Responsibilities: Responsible for designing, implementing and managing multiple research projects. Reviewing grant proposals and manuscript submissions. Training and supervising of technical and research staff. Representation of laboratory at scientific research conferences. Methodologies: Chromatin Immunoprecipitation ("ChIP") assays, multiplex real time PCR, large scale protein purification for mass spectrophotometric analysis of post-translational modifications, site-directed mutagenesis and over-expression, and siRNA inhibition of expression, of said proteins in human breast cancer cells

Legal Extern at Fletcher Allen Healthcare

August 2007 - December 2007 | Burlington, VT

Fall semester, 2007 Project: Performed a comprehensive analysis of Fletcher Allen Healthcare-affiliated hospitals and academic medical centers for compliance with Federal Medicare/Medicaid laws, rules and regulations (Stark, Anti-kickback, Anti-Fraud, etc. ). Also assisted Offices of General Counsel, Risk Management and Institutional Review Board (oversees clinical trials) with a wide variety of legal projects. Accompanied representatives on lobbying visits at Vermont State House hearings on State Healthcare legislation reform. Responsibilites: Oral and memoranda-based legal analysis provided under severe time constraints. These analyses and recommendations were relied upon by legal counsel. Methodologies: Extensive legal research of state and federal case law, statutes, rules and regulations. Extensive legal analyses and memo writing.

Senior Scientist at AtheroGenics, Inc

August 2002 - August 2003 | Alpharetta, GA

Project: Validated small molecule therapeutics for arteriosclerosis, asthma, COPD, and other inflammatory diseases. Responsibilities: Established Research Division of Cellular and Molecular Immunology. Trained and assisted other researchers in methods of Molecular Immunology. Set up Florescent Activated Cell Sorter (FACS) facility. Implemented and managed multiple research projects. Reviewed grant proposals and manuscript submissions. Represented company at scientific research conferences. Assisted in compliance with FDA clinical trial rules and regulations. Methodologies: Attended several FACS training courses at Becton-Dickenson FACS facility and learned to use the BD FACS VantageSE high-speed sorter, BD FACS Calibur flow analyzer, and BD FACScan flow analyzers, using multiple software platforms, including FloJo, CellQuest, ModFit, and Cytometric Bead Assay. Established purified primary mast cell and T helper cell cultures for use in drug validation.

Scientist at EpiGenesis Pharmaceuticals, Inc

January 2001 - May 2002 | Cranbury, NJ

Project: Validated aerosol-delivered antisense therapeutics for asthma, COPD, and other pulmonary diseases. Responsibilities: Implemented and managed multiple research projects. Trained others in methods of Molecular Immunology including basic FACS use. Reviewed grant proposals and manuscript submissions. Assisted in compliance with FDA clinical trial rules and regulations. Established blood born pathogen training course. Methodologies: Designed and implemented complex combinatorial primary human cell culture models of pulmonary disease states using B cells, antigen-specific T helper cells, mast cells, macrophages, pulmonary smooth muscle cells, and endothelial cells. Constructed several phagemid cDNA libraries from rabbit, mouse and cynomologous monkey tissues. Cloned antisense target genes. Assisted with cynomologous monkey surgery and tissue collection.

Postdoctoral Fellow at Columbia College for Physicians and Surgeons, Department of Microbiology

August 1995 - December 2000 | New York, NY

Project: Discovered and studied novel genes involved in primary macrophage differentiation, activation and microbial pathogenesis. Responsibilities: Implemented and managed multiple research projects. Wrote several grant proposals. Reviewed others' grant proposals and manuscript submissions. Attendance and presentation at several scientific conferences.

Travelling Scholar/Researcher at Tularik, Inc

November 1994 - March 1995 | South San Francisco, CA

Project: Isolated and characterized cytokine promoter DNA-binding proteins as part of Harvard graduate thesis work (see below). Responsibilities: Implemented and managed multiple research projects. Methodologies: Large scale (10-20 liter) primary cell cultures. Large scale protein isolation, fractionation, purification and identification (by micro-peptide sequencing).

Graduate Student at Harvard University, Department of Genetics

August 1990 - May 1995 | Boston, MA

Project: Studied the transcriptional regulation of cytokine genes in primary T helper 1 and T helper 2 cell clones. Helped to identify c-Maf as the master regulatory factor for T helper 2 fate commitment. Responsibilities: Implemented and managed multiple research projects. Reviewed grant proposals and manuscript submissions. Attendance and presentation at several scientific conferences.

Research Technologist at University of Washington, Department of Genetics

February 1987 - August 1990 | Seattle, WA

Project: Transcriptional regulation of Immunoglobulin genes in human B cells. Responsibilities: Carried out several research projects. Trained graduate students. Managed daily lab operations. Methodologies: PCR. DNA sequencing. Northern (RNA) and Southern (DNA) analyses. Creation and complementation analysis of mutated human B cell lines ("reverse genetics"). Isolation and analysis of primary B cells. Also briefly worked on molecular biology of Plasmodium falciparum (malaria) and Leishmania sp. AWARDS, GRANTS AND TRAINING

Student Interpretive Aide, Tilden Regional Park Botanic Garden at East Bay Regional Park District

November 1984 - April 1987 | Berkeley, CA

Led tours of the Botanic Garden, which focused only on California Native Plants. Assisted with the maintenance and collection of the plant collection.

John W. Rooney's Education

Vermont Law School

2005 – 2008

J.D.

Concentration: Law

Activities: Academic Excellence Award and Dean's List, 2008.


Franklin Pierce Law Center (now University of New Hampshire School of Law)

2006 – 2006

Certification: Advanced Licensing Institute, Intellectual Property Summer Institute

Concentration: Intellectual Property and Licensing


Harvard University

1990 – 1995

Ph.D., Genetics

Concentration: Genetics


University of California, Berkeley

1982 – 1987

B.A., Molecular Biology

Concentration: Molecular Biology


John W. Rooney's Interests & Activities

Intellectual Property Law (Patents, Trademarks, Copyrights, Trade Secrets), Law, Medicine, Science, Higher Education