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Getting your IP House in Order: Patent Fundamentals, Strategies, and Case Studies for Life Science Professionals

Speakers: Janet Xiao (Morrison & Foerster LLP), Zheng Liu (Orrick, Herrington & Sutcliffe LLP), Vandana Date (ex Medivation)
Date: 2015-12-04
Time: 12:45-17:30 Pacific Time
Registration fee: (USD): Regular: $125; For unemployed & students: $20; For major-sponsor rep (incl lunch): $0; For vendor-show reps: $25
Location: SF Bay Area: Foster City Crowne Plaza
Major Sponsor:
Vendor show vendors registered to date:
Registration deadline:2015-12-02  (it will close sooner if the seating cap is reached)

About the Topic

This workshop aims to help life science professionals gain good understanding on the business values of patents and the process of building a strong patent portfolio.  The workshop will begin with an overview of key factors for building a strong patent portfolio in the life science industry. Basic legal requirements for patentability, as well as recent changes in patent law that impact patent strategic considerations will then be covered. With this groundwork, we will then discuss the process and key considerations for obtaining patent protection from the inception of the ideas to the preparation of a patent application and working with the patent office to obtain a patent.  The workshop will conclude with an overview of the key considerations during IP due diligence as well as practice tips on how to best prepare life science companies for IP due diligence by investors and collaborators.  Real-life case studies will be presented throughout the workshop.

Key topics to be covered:

  • Business values of a strong IP portfolio; what constitutes a strong IP portfolio and how to build one
  • Legal requirements for patentability and recent changes in patent law impacting patent strategic considerations
  • Overview and key considerations of the patent application process
  • IP due diligence practice and practice tips on how best to prepare for IP due diligence



12:45pm - 12:50pm   PBSS Welcome (Organizer)

12:50pm - 1:40pm  1. Intellectual Property in Life Science: An overview and Developing / Implementing an Effective Global Patent Strategy  (Vandana Date)

1:40pm - 2:30pm  2. Overview and key considerations of the patent application process (Janet Xiao)

2:30pm - 2:45pm  Break

2:45pm - 3:35pm  3. Legal Requirements for Patentability and Challenges to Patent Validity (Zheng Liu)

3:35pm – 3:50pm  Break

3:50pm - 4:40pm  4. IP due diligence and practice tips (Janet Xiao and Zheng Liu)

4:40pm - 5:10pm  Panel Discussion (All speakers)




About the Speakers

Dr. Janet Xiao is a partner in Morrison & Foerster’s Life Science Group primarily representing clients in the biotechnology and pharmaceutical industries in their world-wide patent procurement, patent portfolio management, and strategic planning. Dr. Xiao advises biopharmaceutical companies and research institutions on patent matters relating to various technologies including antibody therapeutics, nanomedicine, personalized medicine, drug delivery systems, drug screening platforms, diagnostics, and nutraceuticals. She also represents many start-up biopharmaceutical companies to help them build a strong IP position from inception. In both 2014 and 2015 Dr. Xiao was listed in Chambers Global as a leading IP expert in the U.S. and a leading IP lawyer in China as an expert based abroad.

Ms. Zheng Liu, Of Counsel in the Silicon Valley office of Orrick, Herrington, & Sutcliffe LLP, is a member of her firm’s Intellectual Property Group.  Ms. Liu’s practice focuses on patent, trade secrets, and unfair competition litigation, intellectual property counseling, due diligence and technology transactions across a broad range of industries, including biotechnology, pharmaceutical, medical devices, Internet and telecommunications. Ms. Liu has also been the lead member for many patent infringement and commercial litigation cases and has argued important issues such as claim construction and examined witnesses in federal courts.

Ms. Vandana Date is an experienced Life Sciences Executive with extensive experience in the life sciences industry on a wide range of intellectual property and business development matters, including nurturing and supporting innovation, protecting and managing a global patent docket, conducting due diligence and managing collaboration partnerships and transactional matters.  Ms. Date was most recently at Medivation as VP of Intellectual Property; and prior to joining Medivation, she served as a director of intellectual property at Threshold Pharmaceuticals, Inc. and a patent attorney at ALZA/Johnson & Johnson. Early in her career, Ms. Date worked as a research scientist at various organizations. Ms. Date received a J.D. from Golden Gate University, a M.S. in Organic Chemistry from Duke University.

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