MATTO seminars

Dear MATTO members,

You are invited to a MATTO seminar on Wednesday, April 25 2018 at 3:30pm-5pm:
“101 Successes: Getting Patents in Face of Rejections under Section 101”

Please note that our seminar will be in a different location – it will be in the KPMG LLP, 15th Floor, CIC, One Broadway, Kendall Square, Cambridge, MA 02142

While considerable research at our universities and research hospitals involves diagnostic methods and computer software and, inventions in these areas have been made much harder to protect with patents as a result of the Supreme Cout’s Mayo decision in 2012, on a diagnostic method, and Alice decision in 2014 on computer software.

After a brief review of the Mayo and Alice cases, this seminar will focus on how to structure patent applications and the patent claims in them to improve chances for success in the Patent and Trademark Office and in the courts.

Are there ways one can claim such an invention that will enhance the chances of allowance?  Are there ways of claiming such inventions without even citing the natural law but still get commercially valid protection?  How, at the application preparation stage and during prosecution, do you enhance your chances of success? Our three experienced patent practitioners will answer these questions.

Come and learn that there are some silver linings to the dark clouds that Mayo and Alice cast on the inventive activity of our researchers.

Panelists:

  • Elizabeth Spar, Partner, Sunstein Kann Murphy & Timbers LLP
  • Bruce D. Sunstein, Partner, Sunstein Kann Murphy & Timbers LLP
  • Jay Kugler DeYoung, Principal, Fish & Richardson

Seminar Organizer: Robert Benson, Principal, South Shaker Associates

The seminar is free but you have to register on this link 

Refreshments and Networking at 3:30 – 4:00 PM

Discussion 4:00 – 5:00 PM

Bios:

Jay Kugler DeYoung
Jay Kugler DeYoung is a Principal in the Boston office of Fish & Richardson. Her practice emphasizes U.S. and foreign patent prosecution, opinion work, and strategic counseling, primarily in biotechnology and other life sciences. Ms. DeYoung focuses on helping academic and research institutions, hospitals, and start-up biotech companies protect their cutting-edge and foundational scientific discoveries with strong intellectual property rights. Ms. DeYoung’s practice includes prosecution of patent applications in all areas of molecular biology and biochemistry including: recombinant nucleic acid and protein products, and methods of producing them; methods of treating human and animal disease (including the use of immunotherapies such as the administration of antibodies or cells); transgenic animals and cell lines; virology (including methods of treating viral infections and producing viruses) and vaccines. Special areas of expertise include inventions involving gene and genome editing (e.g., CRISPR, TALE, and ZFN); translational and transcriptional modulation; stem cells; diagnostic, prognostic, and pharmacogenomic biomarkers (genomic, proteomic, and metabolic); assays; therapies and diagnostics for autoimmune diseases, mental illnesses, and cancers; and molecular design and modeling of drugs.

Elizabeth Spar
Dr. Spar has extensive experience as a life sciences attorney, with a focus on intellectual property and patent law, including both patent prosecution and freedom to operate. Her expertise includes drafting patent applications, preparing responses to office actions, and contributing to infringement, validity and patentability analyses, including performing IP diligence for transactions such as licenses, acquisitions, and initial public offerings.  Dr. Spar’s expertise also includes participating in complex interference proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. She is co-chair of the firm’s Diversity Committee.

Bruce Sunstein
Bruce D. Sunstein is the founder of the Boston law firm Sunstein Kann Murphy & Timbers LLP. His practice focuses on the development, management and monetization of intellectual property portfolios. Patents issuing on applications on which Bruce has worked have led to 8- and 9-figure infringement awards. Bruce has served as an expert witness, and as an arbitrator, in a range of intellectual property disputes.  He is a frequent lecturer in intellectual property matters and has authored numerous papers on intellectual property subjects. He has been named by the publishers of Law & Politics and Boston magazine in 2006, and 2016-17 as among the top 100 lawyers in Massachusetts. He has been selected by his peers for inclusion in Best Lawyers in America® 2013-18 in the field of Intellectual Property – Litigation. He was also named to the Super Lawyers® list in the practice area of intellectual property 2004-2018 in Massachusetts, a list limited to the top 5 percent of attorneys in each region. Bruce is a named co-inventor of a cannulated screw system for use in knee surgery, patent 9,452,007, and a business method for assisting in the prevention of identity theft, patent 6,985,887. His practice involves pharmaceuticals, medical devices, bioinformatics, electronic circuits and systems, computer hardware and software, communications and speech, and mechanical devices. Bruce holds degrees from the Massachusetts Institute of Technology (B.S.), Indiana University (M.A.), and Boalt Hall School of Law of the University of California at Berkeley (J.D.). He also serves as a mentor for start-up companies in MIT’s Venture Mentoring Service.

 

 

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