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Winter 2020 Patent Law Course for Entrepreneurs

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The Winter 2020 Patent Law Course for Entrepreneurs is designed for and open to all students/post-docs with life sciences backgrounds to learn more about intellectual property law. The Patent Law course features a combination of lecture and interactive workshops.

The Winter 2020 Patent Law Course for Entrepreneurs is designed for and open to all students/post-docs with life sciences backgrounds to learn more about intellectual property law. The Patent Law course features a combination of lecture and interactive workshops. Students will be introduced to intellectual property with an emphasis on key life science patent issues, the FDA, and patent licensing. The sessions will teach students important elements of patent law through discussion of court cases and practical examples. Students will be introduced to the teaching style followed by U.S. law schools. The course is designed to familiarize students to life in a patent law firm.Topics of Discussion:Session 1 – 1/16: IP 101 instructed by Anita Choi, J.D., M.B.A. and Matthew Chivvis, J.D.<ul><li>Introduction to Intellectual Property Law: Patentability, FTO, Inventorship</li><li>The IP saga of a professor who tried to take his invention without permission</li></ul>Session 2 – 1/23: Patent Drafting instructed by James J. Mullen, Ph.D., J.D.<ul><li>Parts of a patent</li><li>Taking a disclosure</li><li>Claim Drafting Exercise</li></ul>Session 3 – 1/30: Special Patent Topics instructed by Janet Xiao, Ph.D., J.D. and Anna Yuan, J.D.<ul><li>Antibodies/CAR T</li><li>Gene and Cell Therapies</li><li>Biosimilars and Generics</li><li>Medical Devices</li><li>Life Science Data Analytics: AI/Software/Data Science</li></ul>Session 4 – 2/6: Other Life Science Legal Issues instructed by Bethany Hills, J.D. and Rufus Pichler, J.D.<ul><li>FDA: The drug and software approval process</li><li>Patent Licenses including a discussion of university technology transfer</li></ul>Session 5 – 2/13: Panel discussion about a career in patent law Moderated by: Anita Choi, J.D., M.B.A.Panelists Include: Lisa Silverman, Ph.D., J.D., Sejin Ahn, Ph.D., J.D., John Chapman, Ph.D., J.D.Course Dates: Thursday, January 16 Thursday, January 23 Thursday, January 30 Thursday, February 6 Thursday, February 13Course Times: 5:00 p.m. - 6:45 p.m.<hr>

Hosted by SPARK Translational Research Program at Stanford School of Medicine and Morrison & Foerster LLP

Winter 2020 Patent Law Course for Entrepreneurs

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Dr. Chapman provides patent and intellectual property services to clients on pharmaceutical, chemistry, biotechnology, and medical device matters.He is experienced in drafting patent applications, proactively prosecuting domestic and foreign patent applications, and assisting with due diligence and freedom-to-operate assessments. Dr. Chapman is committed to providing responsive client service utilizing the firm’s collective legal and scientific capabilities. Since joining the firm in 2013, he has worked with a variety of clients including startup biotechnology, chemistry, and medical device companies; large pharmaceutical companies; academic institutions; and independent inventors. Dr. Chapman’s scientific education includes studies in medicinal chemistry, proteomics, mass spectrometry instrumentation and application, biochemistry, pharmacology, molecular biology, and chemistry. His technical background also includes training and research conducted at: the David R. Goodlett Laboratory (utilized mass spectrometry instrumentation to identify novel protein pathway responses and protein post-translational modifications); Amgen (utilized mass spectrometry instrumentation to study antibody-drug conjugates); and the Southwest Environmental Health Sciences Center (studied protein adduction by environmental toxicants).He is admitted to practice in California and before the U.S. Patent & Trademark Office.

John Chapman

Associate

Matthew protects his clients’ intellectual property and defends his clients wrongly accused of infringement. His hearing and trial experience is extensive. Whether exploring complex technical issues regarding a biologic drug, or digging into the finer points of patent law, he excels at keeping his opponents on their toes. Intellectual Asset Management 1000 remarked that Matthew is “a skilled technical lawyer and brief writer who can handle large and nuanced cases.” He has litigated patent matters in many of the top patent venues throughout the United States, including the District Courts of California, Texas, Delaware, and New Jersey, the Federal Circuit, and the International Trade Commission.Life sciences clients often rely on Matthew’s extensive technical experience and his ability to grasp complex and cutting-edge issues quickly. His work in this area includes proceedings involving monoclonal antibodies, antibody-drug conjugates, small molecule inhibitors, vaccines, nutritional supplements, bioimplants, drug-eluting stents, blood glucose monitoring devices, plant genetics, and animal husbandry. He knows the ins and outs of the “patent dance” in Biologics Price Competition and Innovation Act (BPCIA) proceedings, and has advised clients on successful strategies for engaging in multi-phased BPCIA and Hatch-Waxman Act matters.Matthew is a registered patent attorney, and his considerable experience includes practicing before the United States Patent and Trademark Office, especially in inter partes and post-grant review proceedings. He also regularly advises clients on plant and agriculture intellectual property matters, including strategic use of plant patents, plant-variety protection certificates, and trademark rights. In addition to life sciences matters, Matthew has litigated cases involving internet firewalls, network security, virtualization, smartphone, interactive television, website, and display technologies.Matthew graduated from law school magna cum laude and was presented with the Academic Excellence Award for his graduating class. He clerked for Chief Judge James Ware (ret.) of the Northern District of California from 2007 to 2008. Before law school, Matthew received a Bachelor of Science in molecular biology.Having grown up in Alaska, Matthew has great appreciation for the outdoors. In his free time, he enjoys skiing, hiking, and trail running.

Matthew A. Chivvis

Partner

Anita Choi has decades of experience providing strategic advice to companies and investors in the <a href="/capabilities/life-sciences-healthcare" target="_self" dir="ltr">Life Sciences</a> and <a href="/capabilities/food-agriculture" target="_self">Food + Agriculture</a> industries. She has helped start-up companies build IP portfolios around their core technologies, and counseled them on issues related to patents versus trade secrets. She has worked with larger, more established companies to manage global patent portfolios in a way that integrates IP with their business models. Combining her legal and business expertise enables her to navigate complex challenges that require complex solutions hence why she is so often called upon by clients to help with assessing, building and strengthening patent portfolios.  She has also counseled investors in IP due diligence, identifying critical issues that may affect valuation and risk assessment in deals.Anita is part of the <a href="/life-sciences-healthcare-leadership" target="_self">Life Sciences + Healthcare Leadership Team</a>, as well as the Food + Agriculture Leadership Team within the firm. She co-leads the firm’s Chemistry Subgroup within the patent practice, which covers both the Pharmaceuticals and Materials sector within the chemistry space. She also co-leads the firm’s Food + Agriculture patent practice. Anita’s clients praise her ability to quickly gain a deep understanding of their technology and business, which allows her to think critically, creatively and practically in patent portfolio management.Anita is recognized as a key lawyer by The Legal 500 US for patent prosecution. She received her J.D. from the University of Pennsylvania Law School where she graduated magna cum laude with a degree in Chemistry and was named to the Order of the Coif. During law school, Anita also completed her M.B.A. at the Wharton School of Business.Anita is co-editor of our <a href="https://lifesciences.mofo.com/" target="_blank" dir="ltr">MoFo Life Sciences Blog</a>.Life SciencesAnita gained a solid technical background across disciplines during her time studying at the California Institute of Technology (CalTech), where she received her Bachelor of Science with honors. She spent several years working at Pfizer, developing small molecule compounds for use in oncology therapies. She has performed research at CalTech involving unnatural amino acids, and at MIT involving fluorescent zinc sensors, both for use in developing neuroscience applications.Anita has counseled clients in a wide variety of life science technologies, including small-molecule pharmaceuticals, cannabinoids, nutraceuticals, pharmaceutical and cosmetic uses, pharmaceutical formulations, medical devices, diagnostics, and digital health.Food and AgTechAnita has advised businesses in developing IP strategies for soil and crop technologies, sustainable farming, alternative protein sources, fermentation technologies, extraction technologies, new categories of food and beverage products, and food packaging.The breadth of technologies that Anita works with also enables her to provide IP advice at the intersection of multiple technical disciplines. For example, Anita’s practice is also well positioned at the convergence of data analytics in the Life Sciences and Agriculture industries.ChemistryAnita also has technical expertise in chemistry outside of Life Sciences, such as in the Materials space, including Cleantech. She has developed IP strategies for biobased materials, polymer chemistry, composite materials, catalyst-based technologies, industrial processing, batteries, and carbon capture technologies.IP Due DiligenceAnita is skillful with investor-side and company-side patent due diligence. She supports many of the firm’s corporate deals, advising on ownership and patent portfolio risks and conducting patentability and freedom-to-operate assessments. She also supports her own clients undergoing IP due diligence by investors.IP Litigation SupportAnita also works closely with the IP Litigation Group to formulate strategies for infringement contentions, validity/invalidity contentions, and claim construction positions. She actively supports the patent litigators in pre-litigation diligence matters to evaluate the strength of patents and patent portfolios.Pro BonoAnita has an active pro bono practice and has been awarded the State Bar of California's Wiley W. Manuel Award for Pro Bono Legal Services for many consecutive years. She regularly represents families seeking legal guardianship. She also assists numerous non-profit organizations in developing and securing patent protection for their core technologies.

Anita Choi

Lisa N. Silverman focuses on patent portfolio management and strategic patent counseling in the areas of chemistry and life sciences. She has extensive experience in securing U.S. and foreign patent protection for pharmaceutical products and a deep understanding of patent lifecycle management and strategies for maximizing patent term. In addition to pharmaceuticals, Dr. Silverman also works with clients in the areas of clean technology, bioassays, and medical devices.Dr. Silverman routinely represents clients in both investor- and target-side due diligence, including patentability and freedom-to-operate assessments. She has a keen interest in the intersection of patent and regulatory considerations for pharmaceutical products and medical devices, and she has prepared numerous applications for patent term extension.Dr. Silverman has represented companies of all sizes, from start-ups to multi-national corporations, and provides advice tailored to each client’s unique business needs. She has worked with large companies to ensure robust patent protection for marketed drug products. She has worked closely with several mid-size companies to expand patent protection and mitigate potential infringement risks as lead drug candidates have moved through clinical development toward commercialization. She has also advised small companies on securing early foundational patents.Prior to entering the legal field, Dr. Silverman obtained her Ph.D. in chemistry from Stanford University, where she was the recipient of a National Science Foundation Graduate Research Fellowship. Her doctoral research in the laboratory of Professor Steven G. Boxer focused on spectroscopic investigation of charge transfer reactions in organic, organometallic, and biological molecules. Dr. Silverman received her B.A. summa cum laude, in chemistry and political science from Barnard College, where she performed synthetic organic chemistry research in the laboratory of Professor Christian M. Rojas. She also studied alpha-helical folding of small peptides in the laboratory of Professor Ronald Breslow at Columbia University.Dr. Silverman received her J.D. from Stanford Law School. She was a member of the Organizations and Transactions Group of the Stanford Law School Mills Legal Clinic, where she provided governance advice and drafted contracts and management materials for Northern California non-profit organizations.

Lisa Silverman

Janet focuses her practice on worldwide patent procurement, patent portfolio management, and strategic planning for life sciences companies. Janet’s clients range from large multinational biopharmaceutical companies, such as Celgene and Genentech, to emerging startup companies around the world. She advises her clients on patent matters relating to various technologies, including antibody therapeutics, cell therapeutics, nanomedicine, gene therapy, drug delivery systems, diagnostics, and nutraceuticals.Recognized by Chambers as being highly sought after for patent prosecution and strategy mandates by innovators from around the world, Janet develops and strengthens her clients’ complex patent portfolios to maximize their commercial value. She is instrumental in developing strategies for multibillion-dollar patent portfolios for pharmaceutical clients. As impressed clients noted to Chambers, “Janet’s work is thorough, polished and always of the highest caliber. She is well equipped to advise international clients on patent prosecution and strategy in the biotech industry, drawing on substantial technical knowledge.”Janet works extensively in performing IP due diligence reviews in the contexts of VC investments, technology transactions, mergers and acquisitions, and marketing and manufacturing clearance for biopharmaceutical products. She helps some of the world’s most-sophisticated biopharmaceutical companies and investors assess potential risks and devise preemptive risk-management strategies for their product development and investments. She has led hundreds of IP due diligence projects, and is noted for her in-depth knowledge of patent landscapes in the fields of cancer immunotherapy, gene editing, next-generation sequencing, liquid biopsy, antibody manufacturing, and medical devices. Janet works regularly with patent litigators in the event of legal challenges by third-party competitors or vice versa, and she is frequently called upon to represent clients in litigation and post-grant proceedings.Janet is the Head of firm’s China Life Sciences Group and served as co-chair of the global Life Sciences Group from 2016 to 2019. She is among the very few IP attorneys in the world who are both equipped with solid skills in global strategic IP management and knowledgeable about IP issues unique to China and Chinese clients, and she has been the go-to counsel for IP issues in U.S./China cross-border transactions and operations in China. Chambers Global praises her as an outstanding IP lawyer “who is renowned for her work on IP issues concerning complex cross-border transactions, where she regularly advises Chinese clients.” In a recent edition of Chambers Global, a client says, “Janet . . . is very experienced in advising life sciences clients doing business in China and the US . . . She is highly responsive and always gives practical advice. Her IP expertise adds tremendous value to our business.”Since 2005, Janet has been actively involved in the leadership team of the Chinese-American Biopharmaceutical Society (CABS), a nonprofit organization dedicated to bridging the life sciences communities in the U.S. and China, including serving as president for the 2011–2012 term. She is also a member of BayHelix, a nonprofit organization of Chinese heritage leaders in the global life sciences and healthcare fields.

肖荐（Janet Xiao）博士的业务侧重于为生命科学公司处理在全球范围内的专利采购、专利组合管理和战略策划事宜。肖博士服务的客户范围广泛，包括大型跨国生物制药公司，例如赛尔基因公司（Celgene）和基因泰克公司（Genentech），也包括全球范围的新兴创业公司。她经常就与各种技术有关的专利事宜向客户提供法律意见，其中涉及的技术包括抗体疗法、细胞疗法、纳米医学、基因疗法、给药系统、诊断和和营养学等。来自全球的创新者纷纷向肖博士寻求专利申请和专利战略的法律咨询，这一点也得到了《钱伯斯指南》的认可。她帮助客户开发和加强其复杂的专利组合，从而为客户实现最大的商业价值。在为制药行业的客户制定数十亿美元专利组合的战略方面，肖博士发挥着重要的作用。《钱伯斯指南》曾引用客户评价称，“肖博士是我曾合作过的律师当中知识最渊博、效率最高的一位律师。她能很好地将专利组合的历史信息用于全球专利申请问题上。”肖博士针对风险投资、技术交易、并购和生物医药产品的市场推广与生产许可事宜开展广泛的知识产权尽职调查审查工作。她协助世界上一些最成功的生物制药公司和投资者，为其产品开发和投资评估潜在风险，并制定先发制人的风险管理策略。她曾牵头处理过数百个知识产权尽职调查项目，并凭借自己对癌症免疫治疗、基因编辑、新一代测序、液体活检、抗体制造和医疗设备领域的专利方面的深厚知识而闻名。肖博士时常与专利诉讼律师合作，处理由第三方竞争者提出的法律质疑，或对第三方竞争者提出的法律质疑，她还经常受聘代表客户处理专利诉讼和授予后程序。肖博士是美富中国生命科学业务组主管，她曾在2016至2019期间担任美富全球生命科学业务组的联席主管。肖博士是全球为数不多的既拥有很强的全球战略性知识产权管理技能，同时又对中国和中国客户独特的知识产权问题具有深刻理解的知识产权律师之一，她一直是处理中美跨境交易和在中国境内经营中所涉知识产权问题的首选律师。《钱伯斯全球指南》称赞她是一位优秀的知识产权律师，“她因处理与复杂跨境交易有关的知识产权问题工作而知名，经常代表中国客户处理这方面的事宜” 。在近期一版《钱伯斯全球指南》中，某客户评价称，“肖博士在为于中国和美国开展业务的生命科学客户提供法律意见方面，有非常丰富的经验。她非常负责而且总是提供切实可行的法律意见。她在知识产权方面的专业意见为我们的业务增添了巨大价值。”自2005年以来，肖博士一直积极参与北美华人生物医药协会（CABS）的领导工作。该协会是一家非营利组织，致力于成为连接中美两国生命科学领域的纽带。肖博士在2011至2012年间担任该协会主席。她还是百华协会（BayHelix）的成员。百华协会是一家非营利组织，由全球生命科技和医疗保健产业领域的华人精英组成。

Janet Xiao

Anna Yuan’s practice focuses on patent prosecution, IP due diligence, post-grant proceedings, and IP litigation support. She has been recognized as one of the “Ones to Watch” in America by Best Lawyer and a Rising Star in Intellectual Property by Americas Women in Business Law. Anna is the co-founder and co-chair of the firm’s Life Sciences + AI patent practice. She leverages her experience in software development and product design gained as a product manager at Microsoft to build valuable patent portfolios covering highly complex technologies to maximize their commercial value. Anna’s practice spans a wide array of technologies, including artificial intelligence, autonomous driving, blockchain, robotics, electronic devices, data analytics, virtual reality, wireless communications, network security, medical devices, diagnostics, health care, and genomics. She has developed and managed clients’ core portfolios in the United States, China, Canada, Europe, Japan, Korea, Mexico, and Australia. Anna’s clients include emerging companies, multinational corporations, and universities.Anna received her J.D. from Harvard Law School. During law school, she served as an executive editor of the Harvard International Law Journal and co-founded the Harvard China Law Association. She was also active in clinical and pro bono programs such as the Cyberlaw Clinic based at the Harvard Berkman Center for Internet and Society, and the Harvard Mediation Program.She received her B.S. summa cum laude in computer engineering from Louisiana State University, with minors in computer science and mathematics. Prior to attending law school, Anna worked as a program manager at Microsoft in the Windows Division. At Microsoft, she led projects relating to software user interface design, software reliability, and software privacy compliance. She has also worked as a facilities engineer at Chevron and as a software developer at Halliburton.She is admitted to practice in California and is registered to practice before the United States Patent and Trademark Office. Anna is a fluent Chinese speaker and regularly counsels Chinese clients in Silicon Valley and abroad.

Winter 2020 Patent Law Course for Entrepreneurs

16 Jan 2020 - 13 Feb 2020