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2023 Advanced Topics in Patent Law

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Join Morrison Foerster and GSAS Harvard Biotech Club for our Advanced Topics in Patent Law Course, a six-week program of virtual discussions designed for students, post-docs, entrepreneurs, and investors with a life sciences background. 

Join Morrison Foerster and GSAS Harvard Biotech Club for our Advanced Topics in Patent Law Course, a six-week program of virtual discussions designed for students, post-docs, entrepreneurs, and investors with a life sciences background. MoFo’s seasoned patent lawyers will lead each class with an experience‑based approach to discuss patent drafting and IP strategy in areas including medical devices, small molecules, personalized medicine, diagnostics, AI/machine learning, and biologics.Attendees will gain the hands-on knowledge scientists, engineers, and entrepreneurs need to know about life sciences patent law, including how to avoid common mistakes that can have serious consequences down the road. This is also a great refresher course for any patent practitioners who are interested in an in-depth discussion of key insights for patenting life sciences innovations. The course begins Wednesday, February 1, 2023, from 4:00 p.m. – 5:00 p.m. EST, and runs every Wednesday through March 8, 2023.<h5>Topics of Discussion: </h5>Session 1 – Developing an IP Strategy  February 1, 2023 Speaker: Michael Ward, Ph.D.Session 2 –  Biologics Patent Drafting and IP Strategy   February 8, 2023 Speaker: Meghan Poon, Ph.D.Session 3 – Patent Strategies for Personalized Medicine and Diagnostics  February 15, 2023 Speakers: Karen Potter, Ph.D. and Liz Newman, Ph.D.Session 4 – Medical Device Patent Drafting and IP Strategy  February 22, 2023 Speaker: Christopher GloriaSession 5 – Small Molecule Patent Drafting and IP Strategy  March 1, 2023 Speaker: Anita ChoiSession 6 – Life Science AI and Machine Learning Patent Drafting and IP Strategy (Case Studies)  March 8, 2023 Speakers: Jean Nguyen, Ph.D. and Anna YuanIf you would like to attend, please contact us (<a href="mailto:lifesciencesevents@mofo.com" target="_self">LifeSciencesEvents@mofo.com</a>) for more information.<hr>

2023 Advanced Topics in Patent Law

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Michael (Mike) Ward is co-chair of the firm's Life Sciences + Healthcare Group, Patent Group, Intellectual Property Group, and Food + Agriculture Group.As co-chair of the Patent Group, Mike manages a team that includes 80+ Ph.D.s and 100+ attorneys and others with advanced scientific degrees in life sciences and related engineering disciplines. From small molecules and antibodies to gene editing, artificial intelligence, and machine learning, MoFo has deep experience protecting some of the most important innovations in the life sciences and food and agriculture sectors.Life SciencesFor his work across the life sciences sector, Mike was named San Francisco Biotechnology Lawyer of the Year by Best Lawyers in America in 2020 and is recommended for his patent strategy and prosecution practice in LMG Life Sciences. He also led the team that was named 2022 Patent Management and Strategy Firm of the Year at the 2022 LMG Life Sciences Americas Awards.Food + AgricultureRecognized as “one of the world’s foremost plant and agriculture IP lawyers,” Mike manages a wide range of intellectual property issues related to plants and plant products. He and his team advise clients on plant and plant utility patents; licensing agreements for plant IP; litigation in U.S. state and federal court and before the International Trade Commission; and regulatory approvals from the USDA, FDA, and EPA for gene edited and genetically engineered plants.Patent Strategy + ProsecutionMike is a Legal 500 US Hall of Fame lawyer for patent prosecution and is consistently named one of the leading IP lawyers by Managing Intellectual Property, Chambers USA and Chambers Global, and IAM Patent 1000.Mike works closely with many clients to develop and manage their patent portfolios. He helps clients identify, monitor, and assess the infringement risks of third-party patents. He also assists clients in preparing both offensive and defensive patent portfolios, with a particular emphasis on drafting patent applications that will be utilized in licensing and in litigation efforts.IP Due DiligenceFor venture capitalists seeking to invest in early- and mid-stage companies, underwriters involved in IPOs, and companies seeking to acquire or merge with other companies, Mike has managed extensive IP diligence. His work includes assessment of the strengths and weaknesses of patent portfolios, evaluation of freedom to operate issues, and strategic recommendations for maximizing the value of patent portfolios going forward.Mike also works closely with the IP Litigation Group on various litigation matters including patent interferences to determine the first-to-invent and patent re-examination work and actively participates in both mediation and arbitration proceedings on behalf of clients in the life sciences and food and agriculture areas.He is a frequent lecturer and speaker. Among numerous speaking engagements, Mike is the IP instructor at the UC Davis Licensing Academy and founded Morrison Foerster’s annual Harvard Biotechnology Club Fall Patent Law Course.Mike holds a Ph.D. in plant physiology (biochemistry) and an M.S. in agronomy from the University of California, Davis; a B.S. in biology from the University of California, Berkeley; and a J.D. from Golden Gate University School of Law. He was a post-doctoral fellow in plant molecular biology at the Harvard Medical School and the Department of Molecular Biology at Massachusetts General Hospital, where he worked on the Arabidopsis genome project.

Michael Ward

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

Karen Potter is a partner in Morrison Foerster’s Life Sciences Patent group. Her practice focuses on patent preparation, prosecution, and strategic counseling for start‑up, emerging, and established life sciences and biotechnology companies. She advises clients in the development and management of comprehensive patent portfolios that match their scientific and business objectives. Karen also helps identify and evaluate patentability, ensure freedom to operate, and perform due diligence review of patent portfolios for clients, including investor-side and target-side due diligence.Building on her technical expertise in cellular and molecular biology and immunology, Karen has experience managing and developing patent portfolios in the areas of cell and gene therapies, including T-cell therapies, Natural Killer cell-based therapies, stem cell therapies and gene-based therapies; protein therapeutics such as immunotherapies, including antibody and protein-based therapies; virus therapies; companion diagnostics; and diagnostic assays and bioassays.Karen has 18 years of experience in global patent portfolio development and strategy. She works closely with clients to counsel them on all matters of patent strategy and prosecution and is adept at quickly understanding complex technologies to implement patent filing strategies. She manages and mentors a team of scientific analysts, patent agents, and associates in establishing and building life sciences patent portfolios. Representative clients include Alpine Immune Sciences, Applied Biomedical Science Institute, Aspen Neuroscience, Bristol Myers Squibb and its subsidiaries Juno Therapeutics and Celgene, Indapta Therapeutics, Inhibrx, Rakuten Medical, Sana Biotechnology, Tune Therapeutics, and Turnstone Biologics.Before entering the patent field, Karen was a postdoctoral fellow at the La Jolla Institute for Allergy and Immunology, Department of Molecular Immunology, in the laboratory of Dr. Carl F. Ware. During her doctorate studies, she worked in the laboratory of the late Dr. Jo Rae Wright who served as an invaluable mentor and supporter. The results of her research have been published in peer-reviewed scientific journals, and she has presented her results at national scientific meetings.She received her J.D. from California Western School of Law, Ph.D. in cellular and molecular biology from Duke University, and B.S. in molecular biology from the University of California, San Diego. Karen has been recognized for her achievements as a patent attorney including recognition by the Legal 500 US.

Karen Potter

Dr. Elizabeth (Liz) Newman focuses her work on patent drafting and assisting prosecution. She also has experience in IP due diligence inquiries, including freedom-to-operate analyses, with an emphasis on biotechnology and pharmaceuticals.Liz has worked with a wide range of clients, including startup biotech companies, large pharmaceutical companies, and universities. She has worked with clients in a number of areas, primarily in cancer immunotherapy.Liz received her Ph.D., dissertation awarded with honors, in microbiology and immunology from New York Medical College, where she studied antibody responses to influenza and concentrated on viral genomics, vaccine design, high throughput immunological assays including epitope mapping, molecular biology, and confocal microscopy.She received her B.S. in molecular and cellular biology from Mills College in Oakland, California.

Liz Newman

Patent Agent

Christopher Gloria is a partner in the firm’s Patent Group. Mr. Gloria’s practice concentrates on domestic and international patent prosecution, IP due diligence, and IP litigation support including patent infringement and validity determinations.Mr. Gloria has drafted and prosecuted patents in numerous technology areas including medical devices, user interfaces, autonomous devices, image analysis, machine learning, and consumer products. Before attending law school, Mr. Gloria worked as an engineer in the semiconductor and aerospace industries.Mr. Gloria received his J.D. with highest honors from The George Washington University Law School where he was a member of The George Washington Law Review, a George Washington Scholar, and a Presidential Merit Scholarship recipient. He received his M.S. and B.S. in mechanical engineering from The University of Texas. He was previously a summer associate at the firm.Mr. Gloria is registered to practice before the Patent and Trademark Office and is licensed to practice law in the Commonwealth of Virginia.

Christopher Gloria

Dr. Meghan Poon counsels clients on patent preparation and prosecution, portfolio strategy, and IP due diligence in the areas of biotechnology and biologics. She has significant experience in diverse technologies including antibodies, cell therapies, gene therapies, diagnostics, and gene-edited plants. She represents clients ranging from large international pharmaceutical companies to midsized companies, startups, and universities.Meghan has filed numerous Patent Term Extension applications to secure additional term for her clients’ patents, which cover FDA-approved products. In addition, Meghan has extensive experience addressing complex obviousness-double patenting and subject matter eligibility issues impacting her clients’ patent portfolios. Meghan also represents clients in both investor-side and target-side due diligence, in deals from seed funding to initial public offerings.Prior to law school, Meghan attended graduate school at the University of California, Los Angeles, where she received a Ph.D. in biological chemistry based on her work on protein-protein and protein-DNA interactions at a molecular level. Meghan is the author of several scientific publications and has presented her research at international conferences.Meghan received her J.D. from the University of Southern California Law School and spent a year as a visiting student at Santa Clara University, where she focused on intellectual property.

Meghan Poon

A former lead engineer at the NASA Jet Propulsion Laboratory, Dr. Nguyen focuses her practice on domestic and international patent prosecution. She is a founder and co-leader of the firm’s Life Sciences Data Analytics patent group. She applies her experience also from her doctoral studies and her work as a former research scholar to provide portfolio management and counseling, IP due diligence, and freedom-to-operate analyses. Dr. Nguyen also has experience drafting briefs and inter partes reviews (IPRs), analyzing prior art and patent infringement, working with experts, and handling disputes before the U.S. International Trade Commission (ITC) and the federal courts. Her clients include large domestic and international companies, early-stage startups, and universities.Dr. Nguyen’s knowledge spans a wide range of technology areas, including electronic devices, medical devices and health systems, semiconductor materials and fabrication, computer/device hardware, memory, optoelectronics, optics, nanotechnology, microelectromechanical systems (MEMs), electronic packaging, augmented/virtual reality systems, autonomous vehicles, smart glass, mechanical assemblies, and consumer products. Her experience also encompasses telecommunications and networks, integrated circuits and digital designs, quantum computing, computer software, and digital cameras.Prior to joining Morrison & Foerster, Dr. Nguyen was a lead engineer at the NASA Jet Propulsion Laboratory and a hardware engineer at Hewlett-Packard. She also worked as a research scholar at the Center for Quantum Devices, Georgia Tech Computer Aid Design Lab, and Berkeley Wireless Research Center, where her research involved collaborating with several companies and laboratories such as Raytheon, Cree, IBM, Intel, BAE Systems, Lockheed Martin, Sandia National Labs, U.S. Army Night Vision Labs, Naval Research Lab, Aerospace Corporation, Argonne National Lab, Lawrence Livermore National Lab, Los Alamos National Lab, L3 Communications, Boeing, General Electric, FLIR, Teledyne, and Rockwell Automation.Dr. Nguyen received her J.D. from Loyola Law School. She also received her Ph.D. in electrical engineering from Northwestern University, where she focused her studies on semiconductor materials and optoelectronic devices. She received her M.S. in computer science from the Georgia Institute of Technology, where she focused her studies on computer-aided design and quantum computing. Jean also received her B.S. degree in computer engineering from the University of Wisconsin at Madison with emphasis on integrated circuits and digital designs. She has authored over 40 technical publications, 50 conference proceedings, and three book chapters. She also holds three patents.Dr. Nguyen has served on several committees with the Los Angeles Intellectual Property Law Association (LAIPLA). She is registered to practice in California and before the United States Patent and Trademark Office.

Jean Nguyen

Associate

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.

2023 Advanced Topics in Patent Law

01 Feb 2023 - 08 Mar 2023

Topics of Discussion: