MoFo News Item

Palo Alto Patent Partner Gladys Monroy Featured in IP Law & Business October Issue

10/13/2003

Gladys Monroy's hepatitis C patents help fight disease. Gladys Monroy, the cochair of Morrison & Foerster's intellectual property group, waited a while before going to law school. But once she finished, at age 49, she wasted no time making her mark in patent law. As a second-year associate, in 1987, one of Monroy's assignments was to write the patent application for the technology that led to groundbreaking blood-screening test for the hepatitis C virus, a key cause of liver disease. That in turn led to other related assignments.

In the end, Monroy, who holds a Ph.D. in biochemistry, wrote five successful hepatitis C-related patent applications for biotech pioneer Chiron Corporation. The patent portfolio is now worth an estimated $1 billion, says Monroy, and has led to major advances in the fight to control the spread of hepatitis C. "It's had a tremendous impact on world health," says Monroy, who spent over a dozen years as a biochemistry professor and researcher before enrolling at the University of San Francisco Law School in the early 1980s. Monroy has worked to get Chiron's blood-screening test patented in India, Japan, Australia, and other countries. She also helped the company fend off major court challenges to the hepatitis C patents in the U.S. and U.K-both of which ultimately failed.

Monroy, 66, started her law career at the now-defunct patent boutique Ciotti & Murashige, and joined MoFo in 1991. After nearly 17 years as a biotech patent lawyer, Monroy estimates that she has written (or supervised associate work on) at least 300 patents covering biotech breakthroughs in everything from cell-based immunology to blood purification to cancer-gene therapeutics.

With every patent application, Monroy says it's key to have a thorough understanding of the invention. But just as important, she believes, is the ability to project how the technology and the market might develop. "It's important that it not be [written] in a vacuum," says Monroy. Monroy client Marc Malandro, vice president of Sagres Discovery Corp., values her approach. He says Monroy has played a large role in the company's efforts to win protection for its work in identifying (and developing targeted therapies for) cancer-causing genes. "She's helped us craft a difficult patent strategy," says Malandro. Monroy put together the template patent application that Sagres used to win patent protection for some 1,500 individual genes.

Longtime client Kim Clary of Targeted Genetics Corp. also looks to Monroy for IP strategy. Says Clary: "She knows the science as well as our in-house scientists." And, adds Clary, Monroy knows how to write an application that homes in on the distinguishing features of a given invention, while still winning broad protection. "She can write an application that will blow you out of the water," Clary says.

Reprinted from IP Law & Business, October 2003.

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