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Workshop

[In-Person] Intellectual Property (IP) Strategies and Best Practices


Speakers: Maya Skubatch (Wilson Sonsini), Julia Minitti (Wilson Sonsini), Robert Hess (Life Science Angels), Janet Xiao (Morrison & Foerster), David Pirko (Wilson Sonsini), Wendy Devine (Wilson Sonsini), Adam Cole (Wilson Sonsini), Jennifer Holmes (Encoded Therapeutics)
Organizers: Maya Skubatch (Wilson Sonsini), Julia Minitti (Wilson Sonsini), Robert Hess (Life Science Angels), Dean Wilson (PBSS), Shichang Miao (PBSS)
Date: 2025-02-06
Time: 8:45-17:30 Pacific Time
Registration fee: Regular attendees: $295; Academic/Students/Postdocs/Out-of-Pocket: $45; Major Sponsorship: $3000; Vendor Show: $695, Happy Hour Sponsorship: $975; Lunch Sponsorship: $1250; On-site Registration: $500
Location: Crowne Plaza, Foster City, CA (San Francisco Bay Area)
Major Sponsor:
Vendor show vendors registered to date:
Registration: http://www.PBSS.org
Registration deadline:2025-02-05  (it will close sooner if the seating cap is reached)

About the Topic

This full-day workshop will be delivered by senior IP attorneys from the ranks of well-established firms, investors, and in-house corporate counsel. Presentations will cover IP fundamentals and strategy and best practices for inventors, entrepreneurs, startup and growth-stage companies, as well as those preparing for and engaged in Due Diligence. The litigation process will also be described by an experienced litigator, including frequently encountered IP litigation, best practices and advice, litigation risks, and how to prepare a robust “trial ready” portfolio. Finally, in-house and outside counselors will provide helpful advice on how to work efficiently and effectively with your attorney partners, relative benefits and costs of in-house vs. external counsel, and how to budget and plan for the long-term scope of a robust IP portfolio. The session will conclude with a panel discussion. Presentations include:

  •  Intellectual Property ABCs
  •  IP Strategy and Best Practices for Inventors
  •  The Investor’s Perspective
  •  IP Strategy and Best Practices for Startup and Growth Stage Companies
  •  Navigating IP Due Diligence (DD): Considerations for Strategic Partnering
  •  The Litigator’s Perspective
  •  How to Work with IP Counsel (In-House or Outside Counsel)

Time (PST)

Topic

Speaker

8:45 - 9:00 am

PBSS Welcome and Workshop Introduction

Shichang Miao, PhD, President, PBSS; Robert Hess, PhD, JD

9:00 – 10:00 am

Sec. 1: Intellectual Property ABCs

Maya Skubatch, JD; Adam Cole, PhD, JD

10:00 – 10:50 am

Sec. 2: IP Strategy and Best Practices for Inventors

Julia Minitti, PhD, JD

10:50 – 11:10 am

Break

 -

11:10 am –12:00 pm

Sec. 3: The Investor’s Perspective

Robert Hess, PhD, JD

12:00 – 1:00 pm

Lunch

 -

1:00 – 2:10 pm

Sec. 4: IP Strategy and Best Practices for Startup and Growth Stage Companies

Robert Hess, PhD, JD; Janet Xiao, PhD, JD

2:10 – 3:00 pm

Sec. 5: Navigating IP Due Diligence (DD): Considerations for Strategic Partnering

David Pirko, JD

3:00 – 3:20 pm

Break

 -

3:20 – 4:10 pm

Sec. 6: The Litigator's Perspective

Wendy Devine, JD

4:10 – 5:00 pm

Sec. 7: How to Work with IP Counsel (In-House or Outside Counsel)

Jennifer Holmes, PhD, JD; Julia Minitti, PhD, JD

5:00 – 5:30 pm

Panel Discussion

All speakers

5:30 – 6:30 pm

Happy Hour

-

 

 


About the Speakers

Maya Skubatch is a partner at Wilson Sonsini where she was a member of the board of directors. Maya focuses on strategic patent counseling for life science and healthcare companies. She represents companies at all stages, from early private to late public companies. Maya works closely with licensing, litigation, corporate, and regulatory counsel to develop a comprehensive IP strategy for each client. She also assists with IP matters related to financings, M&A deals, and partnerships, and helps companies and investors with IP due diligence.

Julia Minitti is a partner in the Palo Alto office of Wilson Sonsini Goodrich & Rosati, where she is a member of the patent and innovation strategies practice. Julia counsels clients in the biotechnology, chemical, and pharmaceutical industries on a wide range of intellectual property issues, including patent portfolio development and management, Orange Book listing, patentability, non-infringement, and freedom to operate. She also advises clients in connection with various transactions, such as mergers and acquisitions, licenses, and venture financings.Julia obtained her Ph.D. in organic chemistry from Brown University, where she worked on synthetic methodology for creating heterocycles and catalyzing conjugate additions. Prior to graduate school, she worked as a medicinal chemist at Albany Molecular Research.

Rob Hess is a patent attorney that advises companies on matters of patent strategy in order to help them produce high-value patent portfolios.  He has served as outside and in-house patent counsel for biotech companies.  Prior to becoming a patent attorney, he studied biophysical enzymology and was a life science entrepreneur. He is also an active angel investor.  In that regard, he serves on the boards of Life Science Angels, and Strategikon, maker of Clinical Maestro software for clinical trial business operations.  He is also a member of multiple other investment groups: Band of Angels, NuFund Venture Group, K2X, and MeetPerry.

Janet Xiao focuses her practice on worldwide patent procurement, patent portfolio management, and strategic planning for life sciences companies. Janet’s clients range from large multinational biopharmaceutical companies to emerging startup companies. Recognized as being highly sought after for patent prosecution and strategy mandates, Janet develops and strengthens her clients’ complex patent portfolios to maximize commercial value. She is instrumental in developing strategies for multibillion-dollar patent portfolios for pharmaceutical clients. She also works extensively in performing IP due diligence reviews in the contexts of VC investments, technology transactions, mergers and acquisitions, and marketing and manufacturing clearance for biopharmaceutical products.

David Pirko is a partner in WSGR’s biotech transactions group. David represents emerging life science companies and established venture capital investors in strategic transactional and corporate matters, including venture financings, licensing transactions, partnering and collaboration transactions, mergers and acquisitions and other complex strategic matters.

Wendy Devine is co-chair of Wilson Sonsini’s patent litigation team. She focuses her practice on intellectual property litigation with a concentration in patent litigation and counseling. Leveraging her significant legal and scientific skills, she has successfully counseled and represented clients like Mylan Pharmaceuticals, Impossible Foods, and Sandoz in matters involving various technologies and processes, including biotechnology, biosimilars, pharmaceuticals, food science, medical devices, medical methods, trademarks, and trade secrets. Her diverse industry and scientific subject matter experience informs her ability to foster highly productive collaborations within a client’s key functions, from scientists and product developers to senior executives and board members.

Dr. Adam Cole is a Senior Associate in the San Francisco office of WSGR. Adam’s practice focuses on strategic intellectual property counseling in a variety of technical areas, including genomics, biotools, molecular diagnostics, materials science, engineering, and other life science and biotechnological arts. He prosecutes patents world-wide and conducts patent diligence, including the evaluation of patent portfolios and engaging in freedom-to-operate analyses. Adam received a J.D. from UC Berkeley School of Law, a Ph.D. in Pharmaceutical Sciences from the University of Michigan College of Pharmacy, and a B.S.E in Chemical Engineering from the University of Michigan College of Engineering.

Jennifer Holmes, Ph.D., J.D., is the general counsel, chief compliance officer, and corporate secretary at Encoded Therapeutics, overseeing legal, healthcare compliance, and people functions. With over 25 years of experience in law and industry, she previously served as Associate Director and Assistant General Counsel at Genentech, leading the Cancer Immunology patent practice. Dr. Holmes also worked at Ropes & Gray, LLP, advising academic, pharmaceutical, and biotech clients on patent strategy, litigation, and corporate matters. She holds a Ph.D. in Molecular Biochemistry from Yale, a J.D. from Boston University, and an A.B. in Biochemistry from Mount Holyoke College.


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