Kalpesh V. Upadhye

Kalpesh V. Upadhye, Ph.D., focuses his practice on intellectual property matters, advising clients, from Fortune 50 companies to startups and academic institutions, on building, managing, and optimizing global patent portfolios for cutting-edge innovations at the intersection of life sciences, technology, and mobility.

He designs patent portfolios that are strategically positioned and globally enforceable for a variety of complex technologies including drug delivery devices, medical instrumentation, implantable medical devices, biosensors, medical robotics, wearable devices, biomaterials, machine learning and artificial intelligence, electronic and electromechanical components, hardware and software for autonomous driver assistance systems, semiconductor devices and processes, lighting systems, battery recycling technologies, genetics, gene therapy, bioinformatics, microbiome-based diagnostics and therapeutics, and cellular immunotherapy.

His work also includes harvesting patentable inventions, drafting targeted claims, advising on trade secret protection, conducting intellectual property due diligence, and providing patent validity and freedom-to-operate opinions.

As outside intellectual property counsel, he crafts comprehensive IP strategies that integrate patents, trade secrets, and trademarks, and he advises on licensing and joint research agreements.

He enhances clients’ patent portfolios and market positions through strategic use of ex parte and adversarial proceedings before the U.S. Patent and Trademark Office, and he supports patent litigation through claim construction, prosecution history analysis, fact investigation, and the development of invalidity positions.

Kalpesh is a frequent speaker on intellectual property topics and has been invited by U.S. and international business associations and entrepreneurship programs to present on IP strategy and innovation. Prior to joining Flaster Greenberg, he practiced at one of the 15 largest law firms in the United States.

Before his legal career, Kalpesh conducted postdoctoral research developing nonviral methods for nucleotide delivery into mammalian cells. His doctoral research focused on the multiparametric investigation of mechanosensitive ion channels in mammalian cells and the development of enabling analytical tools. Earlier in his career, he developed MEMS-based point-of-care sensors for measuring cardiac biomarkers in human blood for early diagnosis of myocardial infarction.

Kalpesh received his J.D. from The George Washington University Law School and is fluent in Hindi and Marathi.

• A battery recycling company, in developing a comprehensive IP strategy playbook utilizing a mix of patents, trade secrets, and trademarks and an evaluation process for determining strategically important inventions
• A biotechnology startup, in developing and managing its patent portfolio related to novel RNA-based therapeutics
• A biotechnology company, in managing families of strategic patents directed to biologics and manufacturing methods to maintain exclusivity and navigate emerging case law
• A microbiome-based diagnostics company, in managing its international patent portfolio
• A cancer therapeutics company, in managing its international patent portfolio relating to cell therapy products and manufacturing technology
• An implantable medical device maker, with the Orange Book listing for the device and the underlying therapeutic
• An autonomous and semi-autonomous landscaping vehicles startup, in building a robust IP portfolio
• A major semiconductor manufacturer, in preparing and prosecuting patents relating to chip architecture, memory devices, metrology, and lithography equipment technology
• A major electronic components manufacturer, in preparing and prosecuting patents relating to passive electronic components
• A major pharmaceutical company, in managing its international patent portfolio for drug delivery devices technology
• An infotainment systems manufacturer, in conducting a preemptive pre-suit investigation ahead of a potential patent infringement assertion at the ITC and district court
• A major pharmaceutical company, in managing its international patent portfolio for drug delivery devices and aesthetic implants

Recognized, Leading IP Strategist, IAM Strategy 300, 2024

Member, Practice Group of the Year, Intellectual Property, Law360, 2019, 2024

Member, American Bar Association

Member, American Intellectual Property Law Association (AIPLA)

Member, South Asian Bar Association (SABA)

Member, Licensing Executives Society