The Innovation Firm

When

June 14, 2017
12:00 - 2:00 p.m.

Where

300 Technology Square, 8th Floor
Cambridge, MA

More Info

Coreen Feeley
coreen.feeley@hbsr.com

Innovation in Life Sciences: Demystifying Patent Eligibility

The U.S. Supreme Court has issued several opinions in the last few years curtailing or eliminating patent eligibility in several well-established areas of biotechnology, including genetics, diagnostics and methods of detection.  The U.S. Patent Office looks to these decisions and to those of lower courts for guidance when examining patent applications.  Life science companies should take note: building a strong intellectual property portfolio will often hinge on a greater understanding of how discoveries fit into the framework recently established by the Patent Office under judicial precedent. 

This was an interactive panel discussion with Hamilton Brook Smith Reynolds intellectual property attorneys N. Scott Pierce and Mary K. Murray, Ph.D., and guest panelist James P. McNamara, Ph.D., Executive Director, Office of Technology Management, UMass Medical School.

The panel discussed:

  • the criteria applied by the U.S. Patent Office and courts when assessing whether a discovery is patent-eligible
  • case studies of discoveries in life sciences that are patentable
  • what to consider when assessing discoveries in life sciences in view of recent Supreme Court and lower court decisions and ensuing examination guidelines prepared by the U.S. Patent Office
Mary Lou Wakimura

James P. McNamara, PhD
Executive Director, Office Technology Management
UMASS Medical School
Worcester, MA

Jim has a Ph.D. in Medical Chemistry/Pharmaceutical Sciences, an MA in Organic Chemistry and a BA in Chemistry.  Jim began his career in 1987 as a postdoctoral fellow in the Biosciences Division at SRI International (formerly Stanford Research Institute) located in Menlo Park, California and remained there for 18 years assuming a variety of positions of increasing scientific and managerial responsibility.  Jim’s last position at SRI was the Senior Director of Business Development for the Biosciences Division. Since 2005 Jim has been the Executive Director of the Office Technology Management at UMASS Medical School in Worcester, Massachusetts. At UMASS Medical School, Jim is responsible for the implementation and administration of the Medical School's Intellectual Property Policy, including patenting and licensing of inventions, and for review and approval of contracts for sponsored research, collaboration and fee for service agreements with non-governmental entities.

Philip Mazoki Mary Murray, Ph.D.
Principal
Hamilton Brook Smith Reynolds

Since joining the firm in 1997, Mary has written and prosecuted patent applications in molecular biology, chemistry, polymer science, pharmaceuticals, medical devices and material sciences; drafted freedom-to-operate, invalidity, patentability and inventorship opinions, license agreements, intellectual property agreements, confidentiality agreements; and participated in intellectual property litigation, trademark prosecution and trade secret protection of intellectual property. More...
 

 

Viviane Martin

Scott Pierce
Principal
Hamilton Brook Smith Reynolds

Scott practices in the areas of biotechnology, chemistry, chemical engineering, electronics, medical devices, and pharmaceuticals.  Recent work has included semiconductors, heterojunction bipolar transistors, lithium ion batteries, abdominal and thoracic stent grafts, biomechatronics, renewable energy, water denitrification, antioxidants, wearable computers, nanotechnology, and living cationic polymerization. More...
 

 

Overview

When

June 14, 2017
12:00 - 2:00 p.m.

Where

300 Technology Square, 8th Floor
Cambridge, MA

The U.S. Supreme Court has issued several opinions in the last few years curtailing or eliminating patent eligibility in several well-established areas of biotechnology, including genetics, diagnostics and methods of detection.  The U.S. Patent Office looks to these decisions and to those of lower courts for guidance when examining patent applications.  Life science companies should take note: building a strong intellectual property portfolio will often hinge on a greater understanding of how discoveries fit into the framework recently established by the Patent Office under judicial precedent. 

This was an interactive panel discussion with Hamilton Brook Smith Reynolds intellectual property attorneys N. Scott Pierce and Mary K. Murray, Ph.D., and guest panelist James P. McNamara, Ph.D., Executive Director, Office of Technology Management, UMass Medical School.

The panel discussed:

  • the criteria applied by the U.S. Patent Office and courts when assessing whether a discovery is patent-eligible
  • case studies of discoveries in life sciences that are patentable
  • what to consider when assessing discoveries in life sciences in view of recent Supreme Court and lower court decisions and ensuing examination guidelines prepared by the U.S. Patent Office
Presenter Bios
Mary Lou Wakimura

James P. McNamara, PhD
Executive Director, Office Technology Management
UMASS Medical School
Worcester, MA

Jim has a Ph.D. in Medical Chemistry/Pharmaceutical Sciences, an MA in Organic Chemistry and a BA in Chemistry.  Jim began his career in 1987 as a postdoctoral fellow in the Biosciences Division at SRI International (formerly Stanford Research Institute) located in Menlo Park, California and remained there for 18 years assuming a variety of positions of increasing scientific and managerial responsibility.  Jim’s last position at SRI was the Senior Director of Business Development for the Biosciences Division. Since 2005 Jim has been the Executive Director of the Office Technology Management at UMASS Medical School in Worcester, Massachusetts. At UMASS Medical School, Jim is responsible for the implementation and administration of the Medical School's Intellectual Property Policy, including patenting and licensing of inventions, and for review and approval of contracts for sponsored research, collaboration and fee for service agreements with non-governmental entities.

Philip Mazoki Mary Murray, Ph.D.
Principal
Hamilton Brook Smith Reynolds

Since joining the firm in 1997, Mary has written and prosecuted patent applications in molecular biology, chemistry, polymer science, pharmaceuticals, medical devices and material sciences; drafted freedom-to-operate, invalidity, patentability and inventorship opinions, license agreements, intellectual property agreements, confidentiality agreements; and participated in intellectual property litigation, trademark prosecution and trade secret protection of intellectual property. More...
 

 

Viviane Martin

Scott Pierce
Principal
Hamilton Brook Smith Reynolds

Scott practices in the areas of biotechnology, chemistry, chemical engineering, electronics, medical devices, and pharmaceuticals.  Recent work has included semiconductors, heterojunction bipolar transistors, lithium ion batteries, abdominal and thoracic stent grafts, biomechatronics, renewable energy, water denitrification, antioxidants, wearable computers, nanotechnology, and living cationic polymerization. More...
 

 

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