4. What IP matters do you assist clients with the most?
I prepare and prosecute biotech, pharmaceutical, plant biology and medical device patent applications. I counsel clients concerning patent portfolio management and strategy in numerous medically-related areas such as small molecule therapies, genomics, gene therapy, anti-cancer therapies, molecular biology, immunology, nutraceuticals and medical devices. I also counsel clients on patent analysis, including providing opinions on non-infringement and invalidity, conducting due diligence and counseling on licensing and contract issues.
5. What are the biggest challenges facing your client’s industry?
Section 101 issues loom large over biotech patent prosecution in the field of medical diagnostics and nutraceuticals, for example, making it more and more difficult, if not impossible, to obtain patents on even major discoveries in these fields. Biotech patent prosecution is also more expensive than patent prosecution in most other fields and enablement issues can increase the expense and time involved in prosecuting a patent application.
6. What trends are you seeing in your client’s industry?
The biotech industry is moving to more strategic filings and portfolio management. Many biotech and pharmaceutical companies have begun to use more in-house attorneys to manage their smaller projects, leaving the more challenging projects to outside counsel.
7. What excites you most about working with clients in this industry?
My clients are generally passionate and excited about their work and a good deal of the work that crosses my desk is cutting edge technology. Some of my clients are small businesses or start-ups, and helping them enhance the value of their business through a well-managed IP portfolio and strategic filings gives me great pleasure.
8. How has IP work changed since you first started practicing?
The biggest change has been in the manner in which IP attorneys work. The IP legal industry’s move to a “paperless” environment including electronic docketing, document retention and filings, has made it easier to work efficiently, in the office or anywhere, and changes in technology have made it easier to stay in communication with clients and co-workers.
9. What is your favorite aspect of your practice?
I really enjoy staying current with cutting edge technology in the medical arts and enjoy working with so many clients who are excited about their work. I also love the exposure to so many diverse fields of technology and working on challenging projects.
10. What do you enjoy most about working at KDB?
I enjoy working in a boutique where everyone is part of the same team. The KDB team has incredible depth and scope, and everyone genuinely enjoys working together.
11. What inspired your transition from Big Law to boutique?
I started out in an IP boutique and enjoyed that experience. I went to a Big Law firm to get the big firm experience and widen my horizons, but when KDB offered me the opportunity to return to my roots, working with a group of people I had known and worked with at Kenyon & Kenyon, I couldn’t say no. Also, it gave me the opportunity to get away from big firm billing rates, which was a major concern for my smaller clients.
12. With women holding about 25 percent of roles at IP boutiques and women receiving far fewer degrees in engineering and computer science than men, what has your experience been like as a woman in IP law?
Because I have a PhD in molecular biology, I haven’t had many issues with clients or my male co-workers. Also, more women are drawn to biotech, so the presence of a female biotech IP attorney never caused much of a stir. It has been lonely at times, though.
13. What activities do you enjoy when you’re not at work?
I enjoy doing anything with my family and in the past year or so, we’ve all started white water kayaking.