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Donald Bollella is the chief patent counsel at a biotech company looking to market the kind of product that might easily have fueled a sky-rocketing IPO four or five years ago. Burstein Technologies Inc., based in Irvine, California, has developed a versatile diagnostic tool that uses an optical disk and laser reader to study tiny amounts of blood, urine or other biological samples for the telltale signs of anything from colon cancer to anthrax. One disk could perform 100 or more tests, according to the company. Adding to the potential appeal of Burstein’s “bio-safe reader/analyzer” is that diagnostic results could be transmitted instantly to doctors half a world away via the Internet. Unfortunately, the company just missed the IPO party. Launched in 1992, Burstein spent the next five years developing its technology, hiring the necessary personnel, filing initial paperwork with the U.S. Food and Drug Administration and applying for several basic patents. “We were riding the wave up just as the IPO wave was coming down,” says Bollella. Whether the company manages to catch hold of another wave or winds up crashing to shore remains to be seen. A pre-production model of its diagnostic device has been completed, and marketable products are in sight. Burstein could have an AIDS-testing disk ready for sale in India, for example, in perhaps two years. But the company first has to secure new financing to prevent it from having to shut its doors. As of mid-September, Bollella was working out of an office at his home in Irvine. The company headquarters was cluttered with packing boxes. That’s because the skeleton staff still working at Burstein was preparing to move out, though where precisely they were headed no one yet knew. “Senior executives are working on a couple of deals, which could be quite exciting,” says Bollella. “But we’re operating at half-speed right now because funding is limited.” Richard Burstein, the company’s chief executive officer, is well aware that time is running out for the company he founded. “It’s the 11th hour, but there’s a decent chance we’ll put together an outstanding deal for the company,” he says. “There’s always a chance that we won’t. But I’m very hopeful.” If a life-saving deal falls into place, Bollella will deserve nearly as much of the credit as the scientific team that developed Burstein’s diagnostic tool. Since joining the company in 2000, he has methodically sifted through mountains of technical documentation that had built up in Burstein’s labs over the years and generated a patent portfolio that is as impressive as the diagnostic technology itself. “If all goes well and we can develop our business,” says Burstein, “the portfolio that [Bollella] has built for us could be worth, God knows, billions.” The company had only a couple of patents to its name and another 10 or so pending applications when Bollella arrived. In addition, no new filings had been submitted in 18 months. For a scientific staff that at one point included 22 Ph.D.s — one of them a Nobel laureate — along with 19 hardware and software engineers, that was inexcusable, thought Bollella. Over the next three years, Bollella’s legal team filed 225 provisional patent applications. So far, about 60 of those have been converted into full-fledged submissions. At the height of the patent-filing period a couple of years ago, Bollella farmed out some of the patent-drafting chores to a variety of firms, including the Los Angeles, New York and Washington, D.C., offices of Coudert Brothers. He also sent work out to Oppenheimer Wolff & Donnelly, Hale and Dorr and Christie, Parker & Hale, where he had previously worked. But Bollella preferred to keep as much of the patent work as possible in house. At its peak, Burstein had seven lawyers, patent agents and paralegals on the payroll. Bollella himself assumed some of the general counsel functions along with his more dominant patent duties. Today, the in-house team consists of Bollella, one patent agent and a paralegal who doubles as a secretary. There is no general counsel per se, says Bollella, given the company’s current in-limbo status. Nor is Bollella currently working with any outside firms. While the future of the company remains uncertain, Bollella has maintained his focus on Burstein’s potentially lucrative IP assets. The company’s legal department is “a particularly complex IP shop,” says Richard Gruner, who teaches IP law at Whittier Law School, where Bollella is an adjunct professor. “Partly by virtue of the technology they’ve got, they have their fingers in more IP pies than do many other concerns of similar size and state of development.” Gruner says he’s particularly impressed by Bollella’s efforts at maximizing the value of the company’s intellectual property. “He has an exceptionally sophisticated view of how to carry that forward systematically in order not to miss anything,” says Gruner. After joining the company, Bollella’s first task was an exhaustive search of the state of the art of using optical disks to analyze biological samples. He then immersed himself in intensive background briefings with the principal inventors and engineers at the company to learn what they had been doing. He asked each of them to bring in all of the documentation they had accumulated in the course of their work. “They stacked it all up in a room,” recalls Bollella. “There were tens of thousands of pages.” Clearly unable to read it all himself, he relied heavily on the company’s scientists for help in determining what was worthy of a patent. Bollella asked each inventor to draw a box encompassing all of their work and to label it with the general term that best described their field, such as “amino assays” or “software development.” He then asked them to subdivide each box into four smaller boxes, with their own labels, and then divide each of those boxes four more ways. The objective was to systematically break down the general subject of their work into smaller and smaller subtopics, says Bolella, “until we got to the smallest boxes, which looked like a patent application.” Finally, Bollella had the inventors sort all of the documentation they had collected and identify which box or boxes each document belonged to. When that process was completed, the original roomful of paperwork had been neatly sorted into hundreds of separate stacks. Bollella and his legal team were now ready to start cranking out provisional patent applications. Bollella forged a career as a patent lawyer after taking what may have appeared to others as a somewhat meandering academic path. He graduated from the Massachusetts Institute of Technology in 1983 with two degrees, one in marine engineering and the other in literature. He delved deeper into French literature at the Sorbonne in Paris and at Oxford, after which he earned a law degree from Boston University in 1988. Six months later, he added an MBA from the same institution to his academic achievements. More recently, Bollella completed a master’s degree in electrical engineering at UC-Irvine. He is currently closing in on yet another advanced degree — this one in Chinese — at the same UC campus. To hear Bollella tell it, his educational training in engineering, languages and literature prepared him well for a career in patent law. After all, he says, it is a practice area that involves the art of putting scientific inventions into words on paper. His first job after law school was in the New York office of Kenyon and Kenyon, one of the nation’s largest IP firms, where he stayed for five years. He subsequently worked for three other firms, along with a brief stint as a solo practitioner. But for most of the past eight years, Bollella has taken on the role of in-house patent counsel. His first in-house job, with DiscoVision Associates in Irvine, gave him an appreciation for the long-term value of patents. More than a decade before Bollella joined the company in 1995, scientists there had made early breakthroughs in optical disk technology. In doing so, the company also obtained some of the key patents on which all subsequent developments in that field have been based. DiscoVision has been reaping the rewards ever since. By the time Bollella arrived, most of the scientists had departed, replaced by lawyers who were running an elaborate licensing program. Bollella left DiscoVision in 2000 for a job in the Irvine office of Christie, Parker & Hale, a longstanding IP boutique in Southern California. One of his first clients was Burstein Technologies. He drew up a three-phase plan to help the company build up its minuscule patent portfolio. Company executives liked the proposal so much that they made Bollella a cash-and-equity offer that he could not refuse. As the company’s chief patent counsel, Bollella says he has taken a “very offensive strategic approach” to drafting patents, looking ahead to the day when Burstein’s diagnostic devices will be rolling off of assembly lines, with the company in position to collect licensing fees at every stage of the process. “We have sliced and diced the invention, so to speak, and we have built a robust portfolio for licensing purposes,” says Bollella. “We anticipate that there might be five or six different types of principal manufacturing going on, with assembly only taking place at a final location. If your patents are all directed toward the final product as sold to the user, maybe you’re not getting upstream licensing royalties. I’ve approached it from that point of view, as well. I tried to anticipate what subcontractors might be out there doing.” He has submitted patent claims, for example, for each of the intricate layers of the biodisks developed by Burstein as well as the process by which they are sandwiched together. Bollella has even applied for a patent on the simple cap that fits on top of each biodisk. Voicing optimism about Burstein’s future, Bollella declines to speculate on what he would do next if the company goes out of business. “I’m committed to this company and to developing this patent portfolio and building a licensing program,” he says. But he’s got other options as well. He already operates, from his home office, a patent agency and IP consulting firm, DB Technical Consulting, that works mostly with small startups in Southern California. Along with his adjunct teaching position at Whittier, he has spoken at various IP seminars in other countries, including several programs sponsored by the World Intellectual Property Organization. His interest in China, in particular, has been further fueled by some WIPO-related excursions to that country. Then there’s India, where Bollella spends one week each year as a lecturer in patent law at the National Law University in Jodhpur. The dean of the law school is establishing an IP law center and wants Bollella to be its director. As part of his visits to India, Bollella has developed contacts with a law firm and with technology companies operating in that country. “I see a lot of potential in China and India,” he says. “I’ve met a lot of bright, industrious people in those two countries.” If Bollella sets out to mine the intellectual property of China and India, there’s no telling how many new patents he could find. Mark Thompsonis a freelance writer in Southern California. His e-mail address is [email protected].

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