Topic: Post Grant Procedures at the U.S. PTO ─ Practice and Policy.
Moderator: Kate Murashige of Morrison & Forester. Panelists include: Nick Godici, Nancy J. Linck and James J. Mullen III
Date: Thursday, November 19, 6:00 pm
Location: San Diego Marriott Del Mar, 11966 El Camino Real, San Diego
The program is a panel moderated by Kate Murashige of Morrison & Foerster and includes presentations from three different perspectives.
Nick Godici, who was Commissioner at the U.S. PTO for 5 years, provides an insider’s view of the U.S. PTO perspective on the various forms of post grant practice.
Nancy J. Linck, the former Solicitor of the U.S. PTO and a former Administrative Patent Judge, is currently a partner at Rothwell, Figg, Ernst & Manbeck and serves as an expert witness in many district court cases and represents petitioners and patent owners in post grant proceedings. She will provide a view from the trenches based on her experience in these proceedings with a number of war stories.
James J. Mullen III, Partner at Morrison & Foerster and consultant for biotechnology firms regarding strategic decisions, will discuss how to fit a decision-making process regarding post grant proceedings into an overall patent strategy.
6:45-7:30 Dinner (salad pre-set)
7:30-8:30 Presentation (dessert provided during presentation if there is not enough time during the dinner period)
Parking discounted $5/$10 (self/valet)
San Diego Marriott Del Mar
11966 El Camino Real
Dr. Kate Murashige, Senior Of Counsel, Morrison Foerster
For more than 30 years, Dr. Kate Murashige has practiced what she refers to as “straightforward patent prosecution work, the drafting and prosecution of patent applications, re-examinations, opinions of validity and infringement, due diligence for financing, and freedom to operate opinions.” Her clients are generally small-to-medium companies and universities, working on cutting-edge biological advancements.
The matters Dr. Murashige has handled throughout the course of her career often deviate from the norm. Dr. Murashige prosecuted a bovine growth hormone patent on behalf of the University of California, which took approximately 20 years from application to issuance and resulted in long-term licensing revenue to the university valued at potentially more than $250 million. More recently, she secured for Plant Biotechnology Laboratories in the UK potentially blocking patents covering gene silencing using small interfering RNA.
As a recognized pioneer in the industry, Dr. Murashige has served on the National Institutes of Health as a member of its National Biotechnology Policy Board. She has also been a member of the Scientific Freedom and Responsibility Committee of the American Association for the Advancement of Science. She has also taught college chemistry and was the Physical Sciences Chairperson at the College of San Mateo for six years.
Dr. Murashige is a member of the Phi Beta Kappa and Sigma Xi honor societies. Chambers USA presented Dr. Murashige its prestigious 2012 “Lifetime Achievement Award” for her significant and continued accomplishments in patent prosecution work. Chambers noted that she “is the most distinguished name among a host of leading lights at Morrison & Foerster and is regarded as a pioneer for the entire technology industry thanks to her seminal work on patent prosecution for biotech and pharma clients.”
Dr. Murashige is not only ranked at the very top of her field as a Senior Statesman by Chambers Global 2015, she is also recommended as a leading lawyer by Chambers USA 2015, Best Lawyers in America 2016, Euromoney’s Expert Guides, IAM Patent 1000 2015, PLC Which lawyer? 2011, Legal 500 US 2015, and Super Lawyers 2012. She has been recognized as a “Life Sciences Star” by LMG Life Sciences 2014. Also in 2013, Dr. Murashige was inducted into the LMG Life Sciences Hall of Fame. Dr. Murashige is recognized by The Daily Journal as one of the Top 25 Portfolio Managers, Prosecutors, and License Specialists in California. She was also named to the Daily Journal’s inaugural list of 25 leading biotech lawyers in California in 2011. Dr. Murashige was selected by clients and peers in The International Who’s Who of Life Sciences Lawyers 2013.
Nancy Linck, Partner, Rothwell Figg
Judge Linck formerly served as the Solicitor for the U.S. Patent and Trademark Office. Nancy also served as an Administrative Patent Judge on the Board of Patent Appeals and Interferences, now called the Patent Trial and Appeal Board. Presently, she is a partner in the intellectual property law firm of Rothwell, Figg, Ernst & Manbeck in Washington, D.C. She is a member of the firm’s post-grant practice group and an author of “Post-Grant Patent Practice,” the second edition of which was published this year by BNA and AIPLA. Nancy’s practice is primarily devoted to post-grant practice in the PTO, Federal Circuit appeals, and serving as an expert witness in patent cases. In 1986 and 1987, Nancy served as a law clerk to the Honorable Pauline Newman, Circuit Judge, U.S. Court of Appeals for the Federal Circuit.
Judge Linck holds a J.D., magna cum laude, from Western New England University School of Law; a Ph.D. in Inorganic Chemistry from University of California, San Diego; an M.S. in Biotechnology from Johns Hopkins University; and a B.S., with honors, in Chemistry from University of California, Berkeley.
Nicholas Godici, Independent Consultant, Godici Patent Consulting
Nick is the former Commissioner for Patents at the United States Patent and Trademark Office (USPTO) serving in that capacity from 2000 to 2005. As Commissioner, Nick was responsible for all aspects of the patent granting process for the United States including a staff of over 5000 employees and a budget of over $750 million. Nick started his career at the patent office in 1972 as a junior patent examiner and worked his way up through the ranks to become Commissioner. He has represented the United States in a number of international negotiations involving intellectual property and has testified before Congressional committees of both the House and Senate on a variety of intellectual property issues.
Additionally, Nick served as the Acting Under Secretary of Commerce for Intellectual Property and Director of the PTO from January to December 2001. After retiring from the PTO Nick served as the Executive Advisor in the law firm of Birch, Stewart, Kolasch & Birch, LLP. Nick is currently an independent consultant on Patent Office related matters and lives in Carlsbad, CA.
James J. Mullen, III, Partner, Morrison Foerster
James Mullen is the managing partner of the San Diego office. His practice includes strategic patent procurement, general counseling on infringement issues, and intellectual property due diligence studies. He also provides counseling on interference issues and reexamination practices and periodically participates in patent litigation.
Dr. Mullen counsels clients pursuing inventions in a variety of biotechnology-related areas, including molecular diagnostics, clean technology, cancer therapeutics and diagnostics, infectious disease therapeutics, small molecule screening protocols, and those seeking protection for novel nucleic acid and amino acid sequence protection.
Dr. Mullen has been recognized as a “Life Sciences Star” by LMG Life Sciences in 2014. Prior to graduate school and law school, Dr. Mullen worked in various laboratories at Hybritech, Inc., a pioneer in the development of monoclonal antibodies, and at the Research Institute of Scripps Clinic.
While earning his J.D., Dr. Mullen was an Associate Production Editor for the Hastings College of the Law Communications and Entertainment Journal.