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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. 

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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. 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 and Food + Agriculture Group.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, Ph.D., J.D., is a nationally recognized patent attorney and leader of Morrison Foerster’s Cell and Gene Therapy Patent practice in San Diego, California. With over 20 years of experience in life sciences intellectual property law, Karen specializes in patent strategy, prosecution, and portfolio management for biotechnology and pharmaceutical companies worldwide.Karen’s technical background in cellular and molecular biology and immunology uniquely positions her as a trusted advisor for innovators in:<ul><li>Cell and gene therapies (including T cell, Natural Killer cell, stem cell, gene-based, and epigenetic therapies)</li><li>Immunotherapies (antibody and protein-based therapies)</li><li>Virus and vaccine therapies</li><li>Companion diagnostics and diagnostic assays</li><li>Protein therapeutics and bioassays</li></ul>Karen leads and mentors a multidisciplinary team of patent attorneys, agents, and scientific analysts, delivering strategic and comprehensive intellectual property services. Her practice includes:<ul><li>U.S. and international patent preparation and prosecution</li><li>Patent portfolio development and management</li><li>Patentability and freedom-to-operate analyses</li><li>Patent term extension strategies</li><li>Due diligence for investors and M&A transactions</li><li>Strategic counseling for startups, emerging, and established life sciences companies</li></ul>Karen is widely recognized for her ability to deliver pragmatic, creative patent solutions tailored to the unique needs of life sciences clients. She has been honored by publications for her leadership and innovative approach in biotechnology patent law.Before her legal career, Karen completed postdoctoral research at the La Jolla Institute for Allergy and Immunology and earned her Ph.D. in cellular and molecular biology from Duke University. Her scientific research has been published in leading peer-reviewed journals and presented at national conferences.

Karen Potter

Christopher Gloria is a patent attorney and partner in Morrison Foerster’s Patent Prosecution Group, where he advises clients on the full spectrum of intellectual property protection and strategy. He works with global companies, emerging startups, and research institutions to build and manage high-value patent portfolios, conduct complex IP due diligence, and navigate patent risk and enforcement issues. With a background in engineering and a deep understanding of emerging technologies, Chris helps innovators translate technical advancements into strategic IP assets across sectors such as artificial intelligence, quantum computing, semiconductors, and aerospace systems.As co-chair of Morrison Foerster’s MedTech industry group and leader of its medical technology patent practice, Chris applies his technical and legal experience to guide companies at the intersection of healthcare and innovation. He advises on patent strategy and portfolio development for technologies including orthopedic and cardiovascular devices, medical imaging systems, transplant innovations, and next-generation implantable devices. His work supports clients from early-stage startups to established life sciences companies seeking to protect and commercialize transformative medical technologies.Beyond MedTech, Chris’s practice also includes deep experience in a variety of high-tech fields, including:<ul><li>Machine learning and other artificial intelligence</li><li>Quantum computing,</li><li>Image processing, and</li><li>Autonomous vehicles.</li></ul>Prior to becoming a patent attorney, Chris worked as an engineer in the semiconductor and aerospace industries. Chris’s engineering experience gives him a unique ability to understand the business and technology challenges underlying intellectual property development.Chris earned his J.D. with highest honors from The George Washington University Law School and holds M.S. and B.S. degrees in Mechanical Engineering from The University of Texas.

Christopher Gloria

As chair of the biotechnology group and a member of the firm’s food and agriculture steering committee, Dr. Meghan Poon counsels clients on patent preparation and prosecution, portfolio strategy, and IP due diligence in the areas of life science and agriculture. Meghan is passionate about working with cutting edge technologies at the frontier or science that impacts human health and global food security. She has significant experience in diverse technologies including antibodies, cell and gene therapies, diagnostics, and gene edited plants. Meghan manages a cross-technology team to service clients developing technology at the interface of life science and AI.Meghan represents clients ranging from large international pharmaceutical companies to midsized companies, startups, and universities. She 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.Meghan is a thought leader on intellectual property issues facing pharmaceutical, biotechnology, and agriculture companies and is sought after to speak at events and publish on these issues. Meghan has written numerous articles on the topics of patents vs. trade secrets, subject matter edibility, written description and enablement in life sciences. Meghan is editor of the MoFo Life Sciences Blog, where she directs content.Prior to law school, Meghan earned her PhD in biological chemistry based at the University of California, Los Angeles. Meghan’s Ph.D. work focused on analysis of protein-protein and protein-DNA interactions of site-specific recombinases. 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

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 and a member of Morrison Foerster’s Patent Prosecution + Strategy and Post-Grant Strategy + Disputes practice areas. Her work includes patent portfolio development and management, IP due diligence, and freedom-to-operate (FTO) analyses, as well as inter partes reviews (IPR) and patent disputes before the U.S. Patent and Trademark Office (USPTO).Dr. Nguyen represents multinational companies, startups, and universities across a broad range of advanced and multidisciplinary technologies. She has particular experience in semiconductor materials and fabrication, quantum computing, electronic and medical devices, computer hardware and software, memory systems, optoelectronics, and microelectromechanical systems (MEMS). Her practice also extends to telecommunications and networks, integrated circuits and digital design, augmented and virtual reality, and autonomous systems.Before entering private practice, Dr. Nguyen served as a lead engineer at a national aerospace research laboratory, where she worked on advanced, mission-critical technologies, and as a hardware engineer at a global technology company. She also held research positions at leading academic and research institutions, collaborating with industry and government organizations on cutting-edge developments. This hands-on experience in developing complex systems informs her ability to translate highly technical concepts into effective IP strategies.Dr. Nguyen holds a Ph.D. in electrical engineering, an M.S. in computer science, and a B.S. in computer engineering. She has authored numerous technical publications and is an inventor on multiple patents. She has also served in leadership roles within a prominent IP law association.

Jean Nguyen

Of Counsel

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 Lawyers 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

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