Current Speakers for Life Sciences Patent Network North America Include:
Smart & Biggar
Gunars Gaikis is one of Canada’s premier and most experienced life sciences IP litigators with more than 25 years of experience in the highly specialised field of pharmaceutical patent, trademark and related litigation. Gaikis was counsel in the first cases commenced under the Patented Medicines (Notice of Compliance) Regulations in 1993, and over the past 20-plus years has continued to represent innovators in numerous precedent setting decisions in NOC and related litigation. He has been recognised among the world’s leading life sciences patent litigators, as an outstanding biotechnology lawyer and as one of the top 30 patent attorneys in the world.
SVP, Global Chief of IP Counsel
Jim Harrington is a member of the law department senior management committee which oversees a 140-person international law department and a member of the Pipeline management committee that oversees all Shire’s research and business development. He has managed complex patent litigation in many countries and is considered a leading expert in US Hatch-Waxman litigation. Before joining Shire in 2004 he spent five years in Belgium. He is a prolific writer and published a seminal treatise on forensic DNA testing, recently cited in a written opinion by the Arizona Supreme Court
Andrea L.C. Reid counsels established and startup clients in all sectors of the biotech and pharmaceutical industries on developing IP issues, policies, patent portfolio management and filing strategies at all phases of the business cycle. Reid’s ability to develop IP strategies for startup clients has resulted in more than $8 billion in acquisition and investor/partner funding. She has more than 30 years of extensive experience in all areas of drug discovery through drug development. She draws on this experience when prosecuting patent applications and preparing patentability, validity and infringement opinions involving active pharmaceutical ingredients, manufacturing syntheses and formulations.
Zoë Butler is a partner at Powell Gilbert LLP, a specialist IP law firm based in London. She is an experienced IP litigator with a strong technical background in the life sciences. She is particularly known for her expertise in advising clients in complex, multijurisdictional patent disputes, with a wealth of experience in advising on European strategies.
Butler has acted for clients ranging from pharmaceutical and biotech companies to mobile phone, electronics and software manufacturers in matters relating to patents, copyright, trademarks and design rights, as well as contract and competition law.
Vice President and Head of Global IP
Scott Alban, PhD, JD, leads the AstraZeneca global intellectual property team, which is accountable for developing and implementing IP strategies across the business, supporting business development teams in the evaluation of new opportunities (eg, asset licences, M&A, and scientific collaborations) and ensuring R&D and commercial assets are appropriately protected. Alban’s team also works closely with the company’s litigation group on all IP litigation matters. He has experience working in nearly all aspects of IP law including patent prosecution, litigation, opinions, interferences, oppositions, licensing and other complex R&D transactions.
Gowling WLG International Limited
With more than 20 years’ experience of litigating IP disputes in the UK and internationally, Paul Inman works with companies ranging from startups to multinational corporations. He specialises in the life sciences sector, which has included acting on high-profile pharmaceutical patent infringement and revocation actions in the UK Patents Court. Inman’s first degree is in molecular biology and biochemistry, so he can take on complex pharmaceutical or biotechnology inventions as easily as less technical (but equally important) mechanical patents and designs. As a global industry, life science businesses expect commercial advice from lawyers with an international outlook.
Arlene Chow frames patent litigation matters from the perspective of the judge or the jury in order to achieve the best solutions for clients. She has applied this pragmatic approach as lead attorney for major companies in district court hearings and trials, federal circuit arguments, inter partes review and post-grant review hearings. Chow has handled patent matters on behalf of various life sciences companies. For the past two decades, her practice has focused on biologics and small molecule matters, with a particular emphasis on Hatch-Waxman disputes. She also handles patent portfolio due diligence in relation to the sale and acquisition of pharmaceutical products.
Foley & Lardner
James F. Ewing, PhD, is a partner and IP lawyer with Foley & Lardner. He primarily advises pharmaceutical, biotechnology, and nutraceutical clients, including companies engaged in drug discovery to develop and produce peptide and small molecule therapeutics, and encompassing such technologies as computationally assisted drug design, immunology and vaccine technologies, stem cell technologies, neurobiology, drug delivery, gene therapy technologies, nanobiology technologies and biomedical devices. Ewing has more than 15 years of experience as a research biochemist in academic medical universities and at drug discovery companies in the development of new cardiovascular, reproductive, gastrointestinal and central nervous system therapeutics, as well as antibiotics.
Abe & Partners
Mr. Abe, managing partner of Abe & Partners, is currently a guest professor of Osaka University Graduate School of Medicine and formerly a lecturer of the University of Tokyo Graduate School of Medicine and Faculty of Medicine. He is an arbitrator in Japan and holds various positions in Japanese medical/pharmaceutical societies.
Dr Rolando Medina, a partner in the IP and life sciences practice groups, represents clients in a variety of IP matters, providing clients with strategic advice in patent prosecution and portfolio management, opinions, due diligence analyses, and licensing, primarily in biotechnology and the medical sciences. He represents mid-sized and large biotechnology and pharmaceutical companies, and startups. In 2017, he was recognised as an IP Star by LMG Life Sciences and named in Who’s Who Legal’s list of top life sciences transactional attorneys. He received his JD, cum laude, from the University of Pittsburgh, and his PhD from Yale University.
Intellectual Property Counsel
Tom McLean is a medicinal chemist by training, and the sole in-house attorney for Nimbus Therapeutics and its portfolio companies. He is responsible for devising and implementing the firm’s IP strategy, and overseeing IP diligence, and the IP aspects of partnering transactions. Nimbus applies deep computational chemistry expertise throughout the drug discovery and development process to create novel small molecules for substantial and underserved human diseases in metabolism, oncology and immunology.
Martina Tyreus Hufnal
Fish & Richardson
Martina Tyreus Hufnal is a principal in the Delaware office of Fish & Richardson. Her practice focuses on intellectual property litigation and covers a wide range of technologies. Hufnal has extensive experience in the pharmaceutical field, including Hatch Waxman litigation and has also tried chemical and software cases. Her experience covers all aspects of pre-litigation diligence and litigation, including case assessment, electronic document collection and production, managing teams handling fact and expert discovery, settlement strategy, and trial work. She offers a diverse perspective to clients on litigation impact on business as well as implications of post-grant proceedings.
Cath Coombes is a commercially minded European and UK Chartered Patent Attorney with more than a decade of experience focusing on the life sciences field. She has particular interest in and considerable experience of securing and upholding patent protection relating to CRISPR technology, as applied to bacterial systems and, more recently, as a gene-editing tool.
The transformation of CRISPR systems from their natural function as part of adaptive bacterial immunity to a toolkit for carrying out site-specific modifications in eukaryotes has led to an explosion of new applications for such technology. Coombes provides a depth of knowledge from working in this highly contentious and constantly evolving field.
University Of Kentucky
Natasha Jones is in her 10th year of university-led economic development. She began her career as a commercialisation specialist at the University of Kentucky’s (UK’s) Center for Entrepreneurship where she authored a grant proposal that secured funding from the US Economic Development Administration. Since 2012, she has focused more on the transactional aspects of technology transfer at UK, initially as a licensing associate. Her primary responsibilities include marketing and licensing a portfolio of intellectual property developed at UK’s Colleges of Agriculture and Engineering as well as UK’s multidisciplinary Center for Applied Energy Research.
VP, Patent Head Oncology & IP Site Head
Lydia McNally is vice president, patent head for Novartis Oncology and the US Patent Department site head. McNally and her team have global responsibility for all patent matters for the Oncology Business at Novartis, including drafting and prosecution, transactions and litigation.
She has been a patent attorney for more than 25 years and has been with Novartis for more than 17 years. She holds a Bachelor’s degree in chemistry from Colgate University, a Master’s degree in chemistry from the University of Vermont, and a Juris Doctor degree from Albany Law School.
Brendan M. O’Malley PhD has experience in all aspects of intellectual property law and represents clients in a broad range of pharmaceutical and biotechnology cases including litigations at the district court level through trial and before the Federal Circuit on appeal, as well as inter partes review proceedings before the USPTO’s Patent Trial and Appeal Board. O’Malley also represents clients in international arbitration proceedings and counsels clients on complex IP issues and in connection with mergers and acquisitions, particularly in the areas of biotechnology and pharmaceuticals.
Bird & Bird LLP
Sally Shorthose is one of Bird & Bird’s leading intellectual property (IP) partners. She provides a full range of IP commercial advice and support to her clients, including licensing, partnering and exploitation agreements, research, development and marketing collaborations. She also frequently advises clients on regulatory and ‘freedom to operate’ matters, and manages significant due diligence matters. As a transactional IP lawyer, she provides advice in relation to the protection and exploitation of a full range of IP rights, in standalone transactions and as part of an acquisition, divestment or investment activity.
SVP, IP Strategy & Litigation
Philip Strassburger began his career at Purdue in 1999 as chief patent counsel, and was later named general counsel. He currently has responsibility for intellectual property prosecution and litigation, and strategic licensing. He has negotiated numerous acquisitions, licences, and patent settlements throughout the world. Before he began his legal career, Strassburger practised as a chemical engineer in The Netherlands. He is admitted to practise in New York and Connecticut as well as the US Patent and Trademark Office.
Eli Lilly and Company
Duane C. Marks is patent counsel at Eli Lilly and Company overseeing IP strategy and procurement for biomolecule assets. Before joining Lilly, he served as patent counsel for Roche Diagnostics where his responsibilities included diagnostic, molecular marker, companion diagnostic and sequencing assets. He holds a BS in biology and chemistry, a MS in biological sciences, and is a summa cum laude graduate of Indiana University McKinney School of Law. He has lectured nationally and internationally on topics including subject matter eligibility, written description, the safe harbour of §271(e)(1), and the doctrine of equivalents.
Senior Director & Senior Patent Counsel
Jeffrey L. Kopacz is senior director of IP at Alnylam Pharmaceuticals in Cambridge, Massachusetts. He is responsible for IP matters related to Alnylam’s clinical and pre-clinical therapeutics, including securing and defending world-wide patent protection, plus due diligence of new technologies, licensing, and competitive and freedom-to-operate analysis. Prior to joining Alnylam Kopacz was an associate at Edwards, Angell Palmer & Dodge (now Locke Lord) and a patent agent at Millennium Pharmaceuticals. He received his JD from the Suffolk University Law School and his graduate degree in molecular microbiology and immunology from Johns Hopkins University.
Senior Corporate Counsel
Shahan Islam is senior corporate counsel in the IP Enforcement Group at Pfizer. At Pfizer he has managed IP enforcement matters in the US, Africa, Middle East, Asia and Latin America by providing hands-on litigation advice, strategy and guidance. Islam has also drafted and lobbied for stronger IP laws which would meet the WTO’s standards in the same regions. Prior to his 15 years at Pfizer he was in private practice for 17 years. He has degrees in mineral engineering and German literature from Columbia University in New York City and a law degree from Tulane University in New Orleans.
Alexion Pharmaceuticals Inc
Senior Director & Patent Counsel
Laural Boone received her PhD in organic chemistry from the University of Chicago, was a postdoctoral researcher at Rockefeller University, and then earned her JD with honours from George Washington University. After prosecution and litigation experience with law firms Finnegan Henderson and White & Case, she joined Alexion Pharmaceuticals in 2014. Boone handles the full scope of global biotechnology IP issues. Her current responsibilities include patent prosecution; rendering legal opinions with respect to patentability, validity and freedom to operate; due diligence reviews; and transactional work. She handles all phases of IP for drug research, development and commercialisation.
SH·IP Global IP
Global Strategy Director
Mitchell C. Atherton leads a group of talented professionals in the fields of IP prosecution, translation and file preparation. Servicing more than 70 jurisdictions in verticals such as energy, manufacturing, life science and pharmaceuticals, he brings a unique perspective stemming from his career working with corporations in the process of globalisation. Atherton joined SHIP Global IP in March 2016 during the very early stages of the project and has helped to draft the company strategy and has counselled the team in the development of SHIP Helm, software that streamlines the processes surrounding patent translation and prosecution.
Sterne Kessler Goldstein & Fox
Director, Biotech/Chemical and Litigation Practice Groups
Eldora L. Ellison, PhD, is a director in Sterne, Kessler, Goldstein & Fox’s biotech/chemical and litigation practice groups. Throughout her 23 years of experience, Ellison has represented clients in more than 60 inter partes review proceedings, over 15 patent interferences, and multiple patent re-examinations and litigations.
Representing clients ranging from multinational corporations to startup companies, Ellison works to resolve inventorship disputes, evaluate patent portfolios, and prepare and prosecute patent applications.
She has been recognised as a National Law Journal “Litigation Trailblazer”, a Law360 “MVP of Life Sciences”, and nominated for “PTAB Litigator of the Year” by Managing Intellectual Property.
CCPIT Patent and Trademark Law Office
Juhua Luo is an experienced patent attorney in China. He joined CCPIT Patent and Trademark Law Office in 2001 and is a deputy director of the firm’s chemical department. His practice focuses on patent drafting, prosecution, invalidation and related matters in the fields of biotechnology and pharmaceuticals. He has handled more than 1,000 patent filing and prosecuting cases and has successfully represented clients from multinational companies to leading universities worldwide in cases of patent re-examination, patent invalidation and patent-related administrative litigation. Luo also provides legal opinions on patent infringement, validity of patents and freedom to operate.
Memorial Sloan Kettering Cancer Center
Chief IP Counsel
Shilpi Banerjee serves as chief IP counsel, Memorial Sloan Kettering, and she is associate general counsel. She directs the Office of Technology Development’s Contracts Unit, where she leads a team of attorneys handling agreements related to the research enterprise at MSK, including sponsored laboratory research and clinical research, as well as transactional and litigation matters related to MSK IP. Banerjee received her JD degree from Stanford Law School in 2002 and her PhD in 1993 from the Department of Microbiology and Molecular Biology of Tufts University School of Medicine.
Morningside Technology Advisory
Investment Professional and IP Counsel
Jason Dinges has been a member of the investment team at Morningside Technology Advisory since 2011, and has extensive experience providing operational and management oversight to early-stage biotechnology companies. Morningside was founded by the Chan family of Hong Kong to make private equity and venture capital investments; he serves on the boards of Morningside’s portfolio companies including Matatu. He spent five years as an IP attorney with Foley & Lardner. He received a PhD in genetics from Iowa State University, and his JD from the University of Iowa College of Law.
White & Case
Intellectual Property Partner
Anita Varma is an intellectual property partner based in White & Case’s Boston office, with a dual practice in London. She is qualified to practise before the US Patent and Trademark Office and the European Patent Office.
Varma provides strategic patent counselling to life sciences industry companies, guiding them through every stage of the patent life cycle. She works with clients in obtaining enforceable claims and supporting them in post-grant proceedings, as well as in developing and executing offensive and defensive patent strategies.
She also conducts strategic review of patent portfolios to identify strengths and weaknesses, and opportunities to minimise threats and maximise revenue.
Founder & CEO
Sunita founded SKS Law Associates in 2007 to advise clients on creation, consolidation and protection of their IP portfolio including patents, trademarks, domain names, designs, copyrights, plant variety and matters relating to biological diversity. Her team of trained lawyers, patent agents and patent engineers provide contentious and non-contentious services relating to patents, trademarks, copyright, industrial designs, geographical indications and plant variety protection for Indian and foreign clients.
The SKS Law Team also provides advice on licensing & technology transfer, protection of trade secrets and biodiversity related issues. For a select clientele we conduct IP Audits and carry out competitive intelligence.
Brinks Gilson & Lione
With more than two decades of experience in the pharmaceutical and biotechnology industries, Jennifer Fox has built a solid reputation as a trusted advisor to biotechnology and pharmaceutical corporations locally, nationally, and worldwide. She has the ability to forge strong relationships with her clients and strategically counsel them on key IP issues. In addition to her JD, Fox holds a MS in molecular biology and biochemistry, and worked as a research scientist at the National Institute of Health and at GlaxoWellcome (now GSK). She has been published in numerous peer-reviewed journals.