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Practical Strategies for Protecting Innovations Under the Doctrine of Equivalents

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Recent case law highlights enablement and written description challenges for genus claims.

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Recent case law highlights enablement and written description challenges for genus claims. Given the challenges of enforcing genus claims, the doctrine of equivalents (DOE) may become a more important tool for patentees when literal infringement is unavailable.Read the <a href="https://lifesciences.mofo.com/topics/practical-strategies-for-protecting-innovations-under-the-doctrine-of-equivalents" target="_blank">full blog post</a>.

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Building on her research experience in cellular and molecular biology, Dr. Kelsey Roberts Kingman focuses her work on patent drafting and assisting prosecution, patent analysis, and patent due diligence inquiries, with an emphasis on biotechnology and pharmaceuticals.Before joining Morrison & Foerster, Dr. Roberts Kingman earned her Ph.D. in developmental biology from Stanford University School of Medicine, where she was a National Science Foundation Graduate Research Fellow. As a graduate researcher in the laboratory of Philip Beachy, she investigated the signal transduction mechanism of the Hedgehog signaling pathway.Dr. Roberts Kingman received her B.A. in biology, magna cum laude, from Columbia University, where her research focused on the genetic basis of neuronal fate specification in the developing cerebellum and in the C. elegans nervous system.

Kelsey Roberts Kingman

Patent Agent

For over a decade, Bu Yin has been working with innovative companies, institutions, and investors in the biotech, pharma, medical device, and agriculture sectors. While patent drafting and prosecution are the bread and butter of his practice, Bu also has extensive experience in providing support for transactional matters, litigation, and patent office proceedings.Bu strives to add value to clients’ businesses by gaining deep understanding of the technologies and providing tailored IP strategies to support the business objectives. Drawing on his scientific training and patent expertise, Bu has become a go-to person for interdisciplinary technologies in the life sciences.Biopharmaceuticals: Bu’s research experience focused on molecular biology and immunology and his patent experience spans a wide spectrum of modalities, including antibodies and other protein therapeutics, viral and non-viral gene therapies, genome editing, cell therapies (e.g., stem cells and CAR-T cells), vaccines, modified nucleic acids (e.g., RNA-based therapeutics), antibiotics, and small molecule drugs, as well as drug formulations and drug delivery systems.Representative matters include:<ul><li>Portfolio management and company side IP due diligence relating to the entire pipeline of a clinical-stage company developing gene therapies for oncology, dermatology, and pulmonology indications;</li><li>IPO due diligence, cross-border R&D collaboration, and patent prosecution for a multinational biopharmaceutical company developing immuno-oncology and vaccine products;</li><li>Litigation support for a case involving a groundbreaking antibody platform technology;</li><li>Patentability analysis and patent prosecution for a biotech company relating to its therapeutic antibodies and antibody drug conjugates (ADCs);</li><li>IP due diligence for various investors in matters involving brand biologics, biosimilar products, mRNA/self-replicating RNA/self-amplifying RNA technologies, CRIPSR/Cas, antibiotics screening, and therapeutics for kidney and eye diseases; and</li><li>Patent prosecution for major global biopharma companies relating to kinase inhibitors, checkpoint inhibitors, cytokines, small peptide therapeutics, TCR-like antibodies, diagnostic and prognostic biomarkers, glyco-engineered therapeutics, personalized medicine, and various combination therapies.</li></ul>Advanced Omics Technologies: Bu has developed extensive patent experience in DNA, RNA, and protein detection and analysis. He is well versed in various immunological assays, PCR assays, next-generation sequencing chemistries, sample preparation, and multi-omics data collection and analysis, particularly those useful for high-throughput, single-cell, spatial, and/or in situ analysis of biomolecules.Representative matters include:<ul><li>Application drafting and patent clearance relating product launch for a company providing powerful tools for life sciences research;</li><li>Patent office proceedings and transactional matters for a commercial-stage precision medicine company developing early cancer detection products;</li><li>Development of patent portfolio for a company developing single-molecule nucleic acid sequencing-based diagnostics, including pandemic scale, point-of-care diagnostics for infectious diseases;</li><li>Patent procurement and counseling for a VC-backed company developing high-throughput, multiplex protein sequencing solutions; and</li><li>Investor/buyer-side IP due diligence and patent prosecution for various clients relating to lateral flow tests (e.g., at-home tests for pregnancy, HIV, or COVID-19), devices, and consumables; rapid PCR tests; and solid phase DNA sequencing devices.</li></ul>Agriculture and food: Bu also has patent experience in the AgTech space. Representative matters include:<ul><li>Global patent portfolio management and collaboration for a leading developer of engineered insects for disease and agriculture pest control;</li><li>Investor/buyer-side IP due diligence for various clients relating to microbiome-inspired feed supplements for livestock; microbial fertilizers; precision fermentation; edible coating for fruits and vegetables; alternative, nature-equivalent proteins; biocatalysts; synthetic pheromones for insect control; and engineered organisms such as insects and plants.</li></ul>Medical device: Bu actively works with medical device companies to develop their IP portfolios, attract capital, and secure market advantage. Representative matters include:<ul><li>All aspects of patent counseling for a company developing soft robotic devices and endoscopic products;</li><li>All aspects of patent counseling for a company in connection with ophthalmic surgical devices, drug formulations, and companion diagnostics; and</li><li>IP due diligence for a global investment company in matters involving dental devices, interventional pulmonology, and vascular medical devices.</li></ul>Bu earned his J.D. cum laude and a certificate in the Business and Corporate Law concentration while working full time as a patent agent. He was a member of the San Diego International Law Journal and received multiple CALI Awards recognizing highest grades in classes. Bu was a Presidential Postdoctoral Fellow at Novartis, and conducted his Ph.D. research at the Children’s Hospital of Philadelphia and the Wistar Institute. His research focused on genetics and epigenetics of DNA damage and repair during lymphocyte development, mechanisms of antibody production and cellular immunity, and genomic instability. Bu was also trained in advanced biotechnology and bioinformatics at Uppsala University, Sweden, and completed research in neurobiology, peptide biochemistry, and organic synthesis of viral inhibitors at Tsinghua University, China.