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Patents and Trade Secrets in AI and Life Sciences

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A core strategic question facing life sciences companies developing novel AI-implemented methods is whether to file for patent...

We are Morrison Foerster — a global firm of exceptional credentials. Our clients include some of the largest financial institutions, investment banks, and Fortune 100, technology, and life sciences companies. Our lawyers are committed to achieving innovative and business-minded results for our clients, while preserving the differences that make us stronger.Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations. Prior results do not guarantee a similar outcome.

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A core strategic question facing life sciences companies developing novel AI-implemented methods is whether to file for patent protection or to keep the methods as trade secret.One successful approach is to develop a hybrid strategy for patents and trade secrets based on current and future company goals, following the considerations outlined below.Read the <a href="https://lifesciences.mofo.com/topics/patents-and-trade-secrets-in-ai-and-life-sciences" target="_blank">full blog post</a>.

Patents and Trade Secrets in AI and Life Sciences

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Briana’s practice focuses on patent preparation, prosecution, and counseling in the areas of biotechnology, pharmaceuticals, and artificial intelligence.Prior to joining Morrison Foerster as an associate, Briana was a summer associate and worked as a law clerk where she advised companies and nonprofit organizations on regulatory pathways to conduct research in novel areas and assisted partners in the design and execution of international patent searches to identify prior art and freedom to operate boundaries.Briana received her J.D. from Stanford Law School where she served as the co-president of the BioLaw club, editor of the Stanford Technology Law Review, and a 2022-2023 Stanford Center for Law and Bioscience Student Fellow.Briana holds an M.S. and Ph.D. in genetics, genomic, and systems biology from the University of Chicago, where she conducted studies of gene regulation to explore the mechanistic basis for complex traits and diseases. While at the University of Chicago, she created reproducible pipelines to analyze functional genomic data using multiple programming languages. For her work, she was awarded the Nan Xiao Prize for Computational Reproducibility and a NIH Ruth L. Kirschtein F31 Fellowship.Briana also holds a B.S., magna cum laude, in biology and Spanish from Duke University. As an undergraduate student, she conducted population genetics research to understand the impact of genetic variation on trait variation between and within species.

Briana Mittleman

Associate

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

Partner

Josh Crawford's practice focuses on domestic patent prosecution, international patent portfolio management, patent infringement and validity determinations, inter partes review proceedings, and IP litigation support.Josh has experience drafting and prosecuting patents in numerous technology areas, including network security, cloud computing, machine learning, computer vision, medical devices, laboratory and assay equipment, microfluidics devices, bioinformatics, user interfaces, and consumer electronics.In addition to patent prosecution, Josh’s practice includes preparing petitions and responses in inter partes review proceedings, as well as preparing invalidity and non-infringement positions in district court litigations.  In adversarial proceedings, Josh has worked on matters concerning network security systems, GPS technology, medical devices, and integrated circuit technologies.Josh received his J.D. with highest honors from The George Washington University Law School, where he was elected to the Order of the Coif and received the Presidential Merit Scholarship and Bobby Burchfield Scholarship. During law school, he worked at Morrison & Foerster as a summer associate and as a law clerk.Before law school, Josh received his B.S. in physics with high honors from the University of Maryland. During his undergraduate studies, he worked with the Joint Quantum Institute performing optics research, including designing and constructing an optical cavity for use in cavity quantum electrodynamics experiments.Josh is licensed to practice law in the District of Columbia and Virginia and is registered to practice before the USPTO.

Joshua Crawford

Of Counsel

Life Sciences + Healthcare

Patent Strategy + Prosecution