Building a high-value patent portfolio is critical to the success of biotech and medical device companies. This is particularly relevant in the current investment environment. Burned by the often vague schemes that passed for breakthrough thinking in the late 1990s, venture capitalists have become more selective, often insisting that the companies have broad, patented inventions to shield their investments from competition.
However, the current legal atmosphere is seemingly unfriendly to patentees. An increasing number of broad patents have been invalidated by the Courts for lack of enablement and/or written description. How should a bioentrepreneur react to these changing conditions in order to stay ahead of the curve?
At this BioE2E event, two of the most prominent biotech patent lawyers and strategists will provide us with a framework as well as specific advice on building high-value patent portfolios under the current investment environment and legal atmosphere. The discussion will also include common pitfalls and misunderstandings regarding patent procurement and enforcement.
Networking session will follow.
Presenters:
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Gladys Monroy, Partner, Morrison & Foerster
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Dr. Gladys Monroy is a partner in the Palo Alto office of Morrison &
Foerster. She is one of only ten attorneys named to the IP Law and Business
Patent Prosecution Hall of Fame.
Dr. Monroy primarily practices in the areas of patents and technology
transfer agreements and has a wide range of experience in the life science
related practice areas. Her practice also includes strategic counseling and
comprehensive patent portfolio management for small, medium, and large
companies. Dr. Monroy's practice includes writing and carrying on all
matters related to prosecuting patent applications, including interferences,
re-examinations, and reissues. Dr. Monroy's practice also includes
conducting due diligence studies in connection with venture capital, private
and public financing, mergers and acquisitions, opinions on patentability,
non-infringement and patent validity, and counseling during product
development.
She has special technical expertise in molecular biology, immunology,
diagnostics, therapeutics, virology, drug delivery systems, high throughput
screening, microarray technology, gene therapy, liposomal technology, small
molecules, proteomics and bioinformatics.
Dr. Monroy holds a Ph.D. in biochemistry and an M.S. in biology from New
York University, a B.A. in chemistry from Hunter College, and a J.D. from
the University of San Francisco Law School. She was an NIH post-doctoral
fellow in molecular biology at the Albert Einstein College of Medicine, and
was on the faculties of both the New York Medical College and the University
of California, San Francisco.
Dr. Monroy is a past President of the Silicon Valley Intellectual Property
Law Association, a former member of the Executive Committee of the
California State Bar Intellectual Property Section, and of the Board of
Directors of the Silicon Valley Intellectual Property Law Association, and
has served as chair or co-chair of a number of other committees of
intellectual property law associations.
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Al Halluin, Senior Counsel, Wilson Sonsini Goodrich & Rosati
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Al Halluin is among the nation's most prominent biotechnology patent lawyers and strategists. Mr. Halluin is one of only ten attorneys named to the IP Law and Business Patent Prosecution Hall of Fame. Mr. Halluin was also credited in Scientific American as the first individual to recognize the patent potential for the basic Nobel prize-winning polymerase chain reaction (PCR) process, now in use worldwide. He is an inventor and has been issued nine patents. In addition, Mr. Halluin is also a private pilot.
Concentrating on cutting edge biotechnology, Mr. Halluin focuses his practice on matters involving such technologies as genomics technology, DNA chips, recombinant DNA, transgenic technology, plant technology (including functional genomic plant technology), protein chemistry, combinatorial chemistry, amplification technology, immunology, and polymer technology.
In addition, his practice includes patent preparation and prosecution, opinion work, freedom-to-use and due diligence inquiries, and infringement opinions in all areas of biotechnology and chemistry.
Prior to joining the firm, from 1983 to 1990, Mr. Halluin was Vice President and Chief Intellectual Property Counsel at Cetus Corporation. From 1976 to 1983, he served as Counsel at Exxon Research and Engineering Company. He also worked for four years as a Patent Examiner at the United States Patent and Trademark Office.
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