Penny R. Slicer 816.691.3438e-mail| vCard
Ever evolving. Ever changing. The biosciences industry creates breakthrough products and procedures on a daily basis. The attorneys at Stinson Morrison Hecker LLP have legal business acumen and technical knowledge to assist our clients with their ever-changing needs. We understand the development of a new biosciences product or method is an evolutionary process. To that end, it isn't just knowing the law, but having a firm understanding of the science and technology behind our clients' endeavors, that we make our goal.
Scope of Service We work closely with individuals and companies to establish an intellectual property strategy that will encourage innovation and growth, not stifle it. The strategy includes developing a strong IP portfolio, assisting with venture and private equity capital, negotiating agreements to enhance market position, taking proactive steps to avoid liability and aggressively enforcing and defending infringement claims. Of Note Our practice group includes patent attorneys who possess a broad range of technical backgrounds, including degrees in biochemistry, biology, microbiology, chemistry and chemical engineering. Our attorneys include board members of University Health Sciences and KC Catalyst, which provides our group with insider knowledge of the emerging trends for our clients' businesses. Our capital and technology transfer attorneys include seven with extensive experience in raising capital and commercializing your work products to fruition. Patents At Stinson Morrison Hecker LLP, we understand that the intellectual property of a biosciences company is one of its most important and valuable assets. The patent attorneys in our Biosciences and Commercialization Group (BS&C Group) have the experience and technical knowledge to assist our clients in protecting and utilizing those assets to establish an exclusive position in the marketplace. Of equal importance, our attorneys counsel clients in strategies to avoid liability for intellectual property infringement in order to protect their businesses' bottom line. In addition to domestic representation, our intellectual property attorneys in the BS&C Group work with an established network of foreign associates in over 50 countries to protect the intellectual property assets of our clients throughout the world. Our patent attorneys possess a broad range of technical backgrounds, including training in biochemistry, cellular biology, genomics, histology, immunology, microbiology, molecular biology, physiology, pharmaceuticals, organic chemistry, virology and zoology. Invention Disclosure Programs For our biological sciences clients, we believe that intellectual property strategy and portfolio development begins with proactive measures to capture and use company innovations that have been developed. This means identifying core intellectual property assets, as well as recognizing areas for potential expansion. We assist our clients with formulating effective invention disclosure programs so that management and lab technicians alike understand and appreciate the protocols they must follow in order to protect the proprietary nature of their ideas.We understand that because many of today's biotechnology innovations arise through university research programs, the "publish or perish" mentality of many institutions may adversely affect commercialization of such inventions. In addition, the drive to commercialize products can result in early disclosures by anxious sales staff. In our experience, one of the biggest risks to inventors and/or a company is that their own activities have somehow jeopardized their patent rights. We therefore continually counsel our clients about events (such as academic publications and offers for sale) that trigger a time deadline for filing a patent application. Patentability/Novelty Searches and Opinions We work closely with inventors and technology transfer departments in order to understand what aspects of their invention may be patentable. A formal patentability search and opinion (often called a "novelty" search/opinion) may be warranted depending on the complexity of the technology, the extent to which the technology is publicly disseminated, and the economic importance of conducting a search to the client. Moreover, patentability searches provide valuable assistance to the attorneys in drafting patent applications in a manner to avoid relevant "prior art." Patent Applications and Portfolio Development We work closely with inventors and technology transfer departments in order to understand what aspects of their invention may be patentable. A formal patentability search and opinion (often called a "novelty" search/opinion) may be warranted depending on the complexity of the technology, the extent to which the technology is publicly disseminated, and the economic importance of conducting a search to the client. Moreover, patentability searches provide valuable assistance to the attorneys in drafting patent applications in a manner to avoid relevant "prior art."Our patent attorneys are experienced in drafting, prosecuting and maintaining patent applications both in the United States and abroad. Types of Patents We counsel our clients about the types of patent protection available and the circumstances under which each type of patent application is appropriate. Our patent application counseling includes: United States: Utility patents; Provisional applications; Design patents; Plant patents Foreign: Patent Cooperation Treaty (PCT); Foreign regional (e.g., Europe); Foreign national (e.g., Japan) Drafting In drafting a patent application, we realize that every part of the patent application is important – from the abstract to the drawings to the claims. With respect to biotechnology inventions, our attorneys are especially careful to consider the Patent Office's guidelines and the Federal Circuit's opinions on the "written description" and "enablement" requirements for patentability.In general, we understand how to take a concept and turn it into a complete patentable invention. Even with our technical training, however, we realize that the inventor is usually the most knowledgeable resource we have. Thus, we work closely with inventors in order to have a full and accurate understanding of the details of the invention. Prosecution After the initial filing of the patent application, "patent prosecution" often involves corresponding with the Patent & Trademark Office about the disclosure in the application, the scope of the claimed invention, and references that impact the novelty of the invention. Moreover, as experienced practitioners, we realize that advancement of the patent application may often be best facilitated by conducting an interview with the Examiner in order to crystallize, and often resolve, the outstanding issues in each application. As with the initial drafting of the patent application, our attorneys continue to consult with the inventor so that the resulting patent provides the desired protection for the innovation. Maintenance Once a patent issues, we assist our clients in ensuring that they are properly marking their patented products to notify potential infringers of the patent rights. In addition to monitoring deadlines for the payment of maintenance fees and annuities due on patented technologies, we provide advice to our clients regarding the utilization and management of those technologies. Accordingly, our patent attorneys in the BS&C Group work with our clients to monitor competitor technology to ascertain the strength of a client's patent position in light of budgetary constraints. Patent Infringement and/or Validity Assessments Infringement AssessmentsOur patent attorneys counsel our clients before initiating litigation by carefully analyzing the strength of an infringement claim. In order to assess whether a competitor is infringing a patent, a detailed review of the claims and the prosecution history of the patent before the Patent & Trademark Office is sometimes required. Validity AssessmentsOur attorneys understand that before delving into an expensive patent litigation matter, a validity search and opinion may be necessary in order to ascertain whether one or more "prior art references" could render the client's patent invalid. In addition to reviewing the references cited by the Patent & Trademark Office, our patent attorneys may recommend that a validity search be performed in order to uncover additional references that are material to patentability. If appropriate, the validity search can focus on relevant U.S. patents, foreign patents, publications, journals and electronic databases. Patent Non-Infringement Opinions and Invalidity AssessmentsIn addition to pursuing those who infringe our clients' patents, our patent attorneys are proactive in assisting our clients with avoiding infringement claims. Thus, when our clients are proposing to market a new product or implement a new process, we work closely with them to help them avoid infringement of existing patents from the outset. In some instances, our clients are aware of particular patents of concern based on a competitor's product that has been marked with a patent number or Orange Book listings. In such a case, our patent attorneys can assist our client in "designing around" the competitor's patent. In other instances, we can conduct a comprehensive infringement search to uncover relevant patents. Of course, our patent attorneys understand that in today's litigious environment, there is no guarantee that a company will not be sued for patent infringement at some point. That is why our patent attorneys have become highly skilled in drafting non-infringement and/or invalidity opinions that assist our clients in defeating claims of "willful" infringement. Moreover, when our clients are faced with allegations of infringement, our patent attorneys are cognizant of having the non-infringement and/or invalidity opinion match the arguments and strategies used at trial. Trade Secrets Our attorneys understand that "trade secrets" can be an important intellectual property asset. Under the law of most states, trade secrets can include information, processes or devices having commercial value that are treated as confidential and are not known or disclosed to the public. Business plans, chemical formulations, source code, manufacturing, specifications, know-how and even client lists may be eligible for trade secret protection. Our significant experience relating to trade secrets includes: Trade secrets identification, maintenance and protection Trade secrets programs, including non-disclosure, non-compete and key employee agreements Trade secrets misappropriation claims Trade secrets litigation Trade Secrets Identification Our attorneys counsel our clients about the circumstances in which they should protect their confidential information, ideas and property as trade secrets in lieu of other forms of intellectual property protection (i.e., patents, trademarks and copyrights). For example, in many instances, there are advantages to trade secret protection versus patent protection insofar as trade secrets can be maintained indefinitely while patents are enforceable for a limited period of time. In addition, trade secret laws can protect valuable business secrets, such as customer lists, that are not patentable. Trade Secrets Programs Trade secrets must be "secret." Therefore, our intellectual property attorneys counsel our clients on the development of comprehensive trade secret programs, which may include the drafting or review of various agreements, such as: Confidentiality/non-disclosure agreements Non-compete agreements Employment agreements Consulting agreements Invention development agreements Manufacturing agreements Licensing agreements In addition, we help our clients develop and implement other strategies to better protect their trade secrets. These include: Warnings to employees not to reveal trade secrets Labels or proprietary legends on documents containing trade secrets Document retention policies Facility security Computer network security Company policy manuals on confidentiality Sign-out and sign-in procedures Exit interviews for departing employees Trade Secrets Misappropriation Claims In many instances, our intellectual property attorneys assist our clients in avoiding claims of unlawful use or misappropriation of the trade secrets of competitors. We can evaluate a potential employee's agreements with his or her former employer and evaluate the trade secrets of former employers. This is especially important for our start-up and venture capital clients. Trade Secrets Litigation Make no secret about it, our attorneys are well-versed in trade secret misappropriation claims. Representing both plaintiffs and defendants, our attorneys have litigated trade secrets cases involving devices ranging from braking mechanisms to the "Pop-A-Shot" basketball game to proprietary software. Of note, we recently assisted one of our clients in obtaining a multi-million dollar judgment for theft of trade secrets, including a punitive damages award. Business & Commercialization Stinson Morrison Hecker has handled hundreds of transactions in this practice area which run the gamut in terms of size and complexity. We have also represented Fortune 500 companies in this practice area with transaction sizes of up to $5 billion. With many mid-sized and smaller companies in this region, we are frequently involved in acquisition and disposition transactions ranging in size from $100,000 to $500 million. We have the ability to handle all structural approaches involved in venture and private equity capital transactions, as well as exit strategies, including: Convertible preferred stock Convertible and subordinated debt Warrants and options Securities purchase agreements Stockholder and investor rights agreements Anti-dilution protection Special governance rights Registration rights Information rights Liquidation preferences Puts and calls Transfer restrictions Rights of first offer and first refusal Founders stock and employment contracts Management stock and incentive plans Private investment/public equity transactions IPO's, secondary offerings Mergers, spin-offs, stock and asset sales Leveraged recapitalizations Management and leveraged buyouts Going private transactions Bankruptcy reorganizations Consolidations and roll-ups Examples of Biological Sciences Technical Experience Our patent attorneys represent clients engaged in diverse businesses, both domestic and foreign. Our substantial experience involving biological sciences technologies includes: Adhesives for medical use AIDS treatments Antibody technology Blood assay techniques Brachytherapy instruments Cancer immunotherapies Catheters Dental compositions Diuretics Feminine hygiene products Genomics Hematology controls Hormone uses and delivery systems Immunodiagnostics Intra-arterial stents Labels for immunodiagnostics Medicated skin treatments Multiple sclerosis treatments Nucleotide/Peptide sequencing Ocular implants Ophthalmological equipment Pharmaceuticals Phytopharmaceuticals Plant genetics Pregnancy/ovulation detection tests Prosthetics Radioimmunodiagnostics Serum separation systems Single nucleotide polymorphisms Skin peels Sperm storage systems Splinting and casting products Veterinary feed supplements Veterinary pharmaceuticals Wound healing treatments
We work closely with individuals and companies to establish an intellectual property strategy that will encourage innovation and growth, not stifle it. The strategy includes developing a strong IP portfolio, assisting with venture and private equity capital, negotiating agreements to enhance market position, taking proactive steps to avoid liability and aggressively enforcing and defending infringement claims.
Our practice group includes patent attorneys who possess a broad range of technical backgrounds, including degrees in biochemistry, biology, microbiology, chemistry and chemical engineering. Our attorneys include board members of University Health Sciences and KC Catalyst, which provides our group with insider knowledge of the emerging trends for our clients' businesses. Our capital and technology transfer attorneys include seven with extensive experience in raising capital and commercializing your work products to fruition.
At Stinson Morrison Hecker LLP, we understand that the intellectual property of a biosciences company is one of its most important and valuable assets. The patent attorneys in our Biosciences and Commercialization Group (BS&C Group) have the experience and technical knowledge to assist our clients in protecting and utilizing those assets to establish an exclusive position in the marketplace. Of equal importance, our attorneys counsel clients in strategies to avoid liability for intellectual property infringement in order to protect their businesses' bottom line. In addition to domestic representation, our intellectual property attorneys in the BS&C Group work with an established network of foreign associates in over 50 countries to protect the intellectual property assets of our clients throughout the world.
Our patent attorneys possess a broad range of technical backgrounds, including training in biochemistry, cellular biology, genomics, histology, immunology, microbiology, molecular biology, physiology, pharmaceuticals, organic chemistry, virology and zoology.
For our biological sciences clients, we believe that intellectual property strategy and portfolio development begins with proactive measures to capture and use company innovations that have been developed. This means identifying core intellectual property assets, as well as recognizing areas for potential expansion. We assist our clients with formulating effective invention disclosure programs so that management and lab technicians alike understand and appreciate the protocols they must follow in order to protect the proprietary nature of their ideas.We understand that because many of today's biotechnology innovations arise through university research programs, the "publish or perish" mentality of many institutions may adversely affect commercialization of such inventions. In addition, the drive to commercialize products can result in early disclosures by anxious sales staff.
In our experience, one of the biggest risks to inventors and/or a company is that their own activities have somehow jeopardized their patent rights. We therefore continually counsel our clients about events (such as academic publications and offers for sale) that trigger a time deadline for filing a patent application.
We work closely with inventors and technology transfer departments in order to understand what aspects of their invention may be patentable. A formal patentability search and opinion (often called a "novelty" search/opinion) may be warranted depending on the complexity of the technology, the extent to which the technology is publicly disseminated, and the economic importance of conducting a search to the client. Moreover, patentability searches provide valuable assistance to the attorneys in drafting patent applications in a manner to avoid relevant "prior art."
We work closely with inventors and technology transfer departments in order to understand what aspects of their invention may be patentable. A formal patentability search and opinion (often called a "novelty" search/opinion) may be warranted depending on the complexity of the technology, the extent to which the technology is publicly disseminated, and the economic importance of conducting a search to the client. Moreover, patentability searches provide valuable assistance to the attorneys in drafting patent applications in a manner to avoid relevant "prior art."Our patent attorneys are experienced in drafting, prosecuting and maintaining patent applications both in the United States and abroad.
We counsel our clients about the types of patent protection available and the circumstances under which each type of patent application is appropriate. Our patent application counseling includes:
In drafting a patent application, we realize that every part of the patent application is important – from the abstract to the drawings to the claims. With respect to biotechnology inventions, our attorneys are especially careful to consider the Patent Office's guidelines and the Federal Circuit's opinions on the "written description" and "enablement" requirements for patentability.In general, we understand how to take a concept and turn it into a complete patentable invention. Even with our technical training, however, we realize that the inventor is usually the most knowledgeable resource we have. Thus, we work closely with inventors in order to have a full and accurate understanding of the details of the invention.
After the initial filing of the patent application, "patent prosecution" often involves corresponding with the Patent & Trademark Office about the disclosure in the application, the scope of the claimed invention, and references that impact the novelty of the invention. Moreover, as experienced practitioners, we realize that advancement of the patent application may often be best facilitated by conducting an interview with the Examiner in order to crystallize, and often resolve, the outstanding issues in each application. As with the initial drafting of the patent application, our attorneys continue to consult with the inventor so that the resulting patent provides the desired protection for the innovation.
Once a patent issues, we assist our clients in ensuring that they are properly marking their patented products to notify potential infringers of the patent rights. In addition to monitoring deadlines for the payment of maintenance fees and annuities due on patented technologies, we provide advice to our clients regarding the utilization and management of those technologies. Accordingly, our patent attorneys in the BS&C Group work with our clients to monitor competitor technology to ascertain the strength of a client's patent position in light of budgetary constraints.
Our patent attorneys counsel our clients before initiating litigation by carefully analyzing the strength of an infringement claim. In order to assess whether a competitor is infringing a patent, a detailed review of the claims and the prosecution history of the patent before the Patent & Trademark Office is sometimes required.
Our attorneys understand that before delving into an expensive patent litigation matter, a validity search and opinion may be necessary in order to ascertain whether one or more "prior art references" could render the client's patent invalid. In addition to reviewing the references cited by the Patent & Trademark Office, our patent attorneys may recommend that a validity search be performed in order to uncover additional references that are material to patentability. If appropriate, the validity search can focus on relevant U.S. patents, foreign patents, publications, journals and electronic databases.
In addition to pursuing those who infringe our clients' patents, our patent attorneys are proactive in assisting our clients with avoiding infringement claims. Thus, when our clients are proposing to market a new product or implement a new process, we work closely with them to help them avoid infringement of existing patents from the outset. In some instances, our clients are aware of particular patents of concern based on a competitor's product that has been marked with a patent number or Orange Book listings. In such a case, our patent attorneys can assist our client in "designing around" the competitor's patent. In other instances, we can conduct a comprehensive infringement search to uncover relevant patents.
Of course, our patent attorneys understand that in today's litigious environment, there is no guarantee that a company will not be sued for patent infringement at some point. That is why our patent attorneys have become highly skilled in drafting non-infringement and/or invalidity opinions that assist our clients in defeating claims of "willful" infringement. Moreover, when our clients are faced with allegations of infringement, our patent attorneys are cognizant of having the non-infringement and/or invalidity opinion match the arguments and strategies used at trial.
Our attorneys understand that "trade secrets" can be an important intellectual property asset. Under the law of most states, trade secrets can include information, processes or devices having commercial value that are treated as confidential and are not known or disclosed to the public. Business plans, chemical formulations, source code, manufacturing, specifications, know-how and even client lists may be eligible for trade secret protection.
Our attorneys counsel our clients about the circumstances in which they should protect their confidential information, ideas and property as trade secrets in lieu of other forms of intellectual property protection (i.e., patents, trademarks and copyrights). For example, in many instances, there are advantages to trade secret protection versus patent protection insofar as trade secrets can be maintained indefinitely while patents are enforceable for a limited period of time. In addition, trade secret laws can protect valuable business secrets, such as customer lists, that are not patentable.
Trade secrets must be "secret." Therefore, our intellectual property attorneys counsel our clients on the development of comprehensive trade secret programs, which may include the drafting or review of various agreements, such as:
In addition, we help our clients develop and implement other strategies to better protect their trade secrets. These include:
In many instances, our intellectual property attorneys assist our clients in avoiding claims of unlawful use or misappropriation of the trade secrets of competitors. We can evaluate a potential employee's agreements with his or her former employer and evaluate the trade secrets of former employers. This is especially important for our start-up and venture capital clients.
Make no secret about it, our attorneys are well-versed in trade secret misappropriation claims. Representing both plaintiffs and defendants, our attorneys have litigated trade secrets cases involving devices ranging from braking mechanisms to the "Pop-A-Shot" basketball game to proprietary software. Of note, we recently assisted one of our clients in obtaining a multi-million dollar judgment for theft of trade secrets, including a punitive damages award.
Stinson Morrison Hecker has handled hundreds of transactions in this practice area which run the gamut in terms of size and complexity. We have also represented Fortune 500 companies in this practice area with transaction sizes of up to $5 billion. With many mid-sized and smaller companies in this region, we are frequently involved in acquisition and disposition transactions ranging in size from $100,000 to $500 million.
We have the ability to handle all structural approaches involved in venture and private equity capital transactions, as well as exit strategies, including:
Our patent attorneys represent clients engaged in diverse businesses, both domestic and foreign. Our substantial experience involving biological sciences technologies includes: