James V. DeGiulio, Ph.D.

P: 312.913.2109
F: 312.913.0002

James V. DeGiulio is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. Dr. DeGiulio has broad experience in intellectual property portfolio development, management, and enforcement in the life sciences area.

Dr. DeGiulio's graduate research involved increasing the efficiency of non-viral gene therapy delivery to the lung. He drafted a patent application based on his graduate research, which is currently pending. His undergraduate research focused on characterizing the properties of a novel bacteriophage.

He has been actively involved in patent litigations ranging from small molecules to medical devices. He has particular experience in pharmaceutical litigation under the Hatch-Waxman framework.

Dr. DeGiulio also prosecutes patents and advises clients on patent strategies, with knowledge of both United States and international patent law. He also has particular experience in assisting university and startup clients with navigating the reporting requirements of National Institute of Health (NIH) funded inventions under the Bayh-Dole Act.

Published Articles

Contributing author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law.

DeGiulio, J.V., FDA Guidance Uncertainty May Deter Use of Abbreviated Biosimilar Approval Pathway, BNA Life Science Law and Industry Report, April 20, 2012, p.1-4.

DeGiulio, J.V., The Genomic Research and Accessibility Act: More Science Fiction than Fact, Northwestern Journal of Technology and Intellectual Property, Spring 2010.

DeGiulio, J.V., Kaufman, C.D., Dean, D.A. The SP-C promoter facilitates alveolar type II epithelial cell-specific plasmid nuclear import and gene expression. Gene Therapy. 2010 Apr; 17(4): 541-9.

Sivaramakrishnan, S. DeGiulio, J.V., Lorand, L, Goldman, R.D., Ridge, K.M. Micromechanical properties of keratin intermediate filament networks. Procedures of the National Academy of Sciences USA 2008. Jan 22; 105(3); 889-94.

DeGiulio, J.V., Vaughan, E.V., and Dean D.A. Intracellular trafficking of plasmids for gene therapy: Mechanisms of cytoplasmic movement and nuclear import. Current Gene Therapy. Dec 2006, Vol 6, 671-81.


Spring 2014 (snippets)
On March 4, in a memorandum issued to the Patent Examining Corps by Deputy Commissioner for Patent Examination Policy Andrew Hirshfeld, the U.S. Patent and Trademark Office (“USPTO”) implemented a new procedure for determining the subject matter eligibility of all claims involving laws of nature/natural principles, natural phenomena, and/or natural products under 35 U.S.C. § 101. The memorandum, entitled “Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products” (the “Guidance Memo”), was intended to assist examiners on this issue in view of the Supreme Court's decisions in Association for Molecular Pathology v. Myriad Genetics, Inc. and Mayo Collaborative Services v. Prometheus Laboratories, Inc. On March 19, the USPTO supplemented the Guidance Memo with additional training materials for patent examiners to help implement the Guidance Memo, which took the form of a presentation comprising nearly one hundred slides (the “Training Materials”).
June 28, 2012 (snippets Alert)
In a history-making decision, the Supreme Court ruled June 28, 2012 that the Patient Protection and Affordable Care Act (PPACA) is constitutional under the taxation clause of the Constitution. The most controversial provision was the individual mandate or "minimum essential" coverage provision that establishes the requirement that nearly all Americans secure health insurance (26 U.S.C. §5000A).
Spring 2012 (snippets)
February 14, 2012 (snippets Alert)
Fall 2010 (snippets)
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