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Effective IP Mechanisms for Bringing Biopharmaceuticals to Market 

Wednesday, October 12th, 2:30pm - 3:45pm

China’s investment in its 12th Five-Year Plan has resulted in a significant boost in biotechnology R&D.  Innovative technologies and discoveries are resulting from investment in biotechnology.  China’s nascent innovative biopharmaceutical sector will be faced with challenges and opportunities for bringing their products to market.  A panel of experts will explore various IP mechanisms for protecting research data including trade secret and regulatory data protections as means for bringing discoveries to market.  The panel will also look to systems in the U.S. (Hatch Waxman) and in Europe (Biosimilars) as possible mechanisms for approval of biopharmaceuticals. 

Moderator:

  • Jonathan Z. Yuan, Managing Partner, US & European IP Practice, Shangcheng & Partners  

Panelists:

  • Haiyan Chen, PhD, JD, Senior Patent Counsel, GlaxoSmithKline R&D China
  • Jeffrey D. Hsi, Partner, Edwards Angell Palmer & Dodge, LLP
  • Joseph P. Taormino, Ph.D., Partner, Co-leader of Biotech Group, Hoffman Eitle
  • Yang Xu, PhD, JD, Chief Patent Counsel, Simcere Pharmaceuticals

Who's Who


Haian Chen - Haiyan Chen is senior patent counsel at GlaxoSmithKline R&D China.  Ms. Chen works on a variety of IP issues and her responsibilities include providing IP advices and opinions, developing and maintaining patent portfolios, developing IP strategy, and conducting IP due diligence.  Prior to joining GSK in 2009, Ms. Chen was a patent attorney at Fitzpatrick Cella in New York. Ms. Chen received her J.D. from Georgetown University and her Ph.D. in Biochemistry from Harvard University.

Jeffrey D. Hsi - Jeffrey's practice is devoted to corporate counseling, formation and execution of intellectual property strategy, and patent prosecution and opinion work in the areas of chemistry pharmaceuticals, biotechnology, agriculture, nutraceuticals, polymers, diagnostics, and medical devices.

Jeffrey's clients include multinational chemical and pharmaceutical companies, emerging biopharmaceutical companies, and academic and governmental research institutions throughout the world.

Jeffrey also served as Chair of the Firm's Intellectual Property Department for the past five years and serves on the Firm's Boston Office Teamwork and Diversity Strategic Committee.

Jeffrey has considerable experience in patent prosecution matters. He has prepared and prosecuted patent applications relating to pharmaceuticals (both approved and candidates in clinical trials), drug design/discovery technologies, nutraceuticals, medical diagnostics and biotechnology. Jeffrey also is experienced in specialty chemical and polymer technologies, medical devices, food and agricultural technologies and business methods.

Jeffrey also has experience in transactional matters including negotiation and establishment of licensing and R&D collaboration agreements, manufacturing and supply agreements, due diligence studies, venture capital funding, merger and acquisition, and technology acquisitions.

As in-house counsel to a biopharmaceutical start-up company, Jeffrey established and guided the company's patent law department, including formation of worldwide corporate intellectual property strategy and internal intellectual property policies.

Jeffrey also advised on aspects of corporate and business development activities. The start-up was ultimately acquired by a major U.S. biotechnology company.

Jeffrey is an invited speaker internationally on various intellectual property issues and has lectured at the Harvard Extension School and at MIT Sloan School of Management. Jeffrey is a co-author of written materials and lectured for the "Biotechnology: Patents, Licensing & FDA Practice" course for the Patent Resources Group.

Jeffrey is a co-inventor on two U.S. Patents and co-author of numerous scientific publications and presentations.

Joseph P. Taormino - Joseph Taormino studied chemistry at Cornell University, Ithaca, NY/USA, B.A. in 1985; Ph.D. in 1992 from The Johns Hopkins University in the area of biochemistry, cell and molecular biology and genetics. Dissertation on the transcriptional and post-transcriptional regulation of gene expression in animal cells. Lecture at JHU on human genetics 1992; Alexander v. Humboldt Postdoctoral Fellowship at the University of Cologne in the field of transgenic animal models in 1994. With Hoffmann Eitle since 1994; European Patent Attorney since 1998. Co-leader of Biotech Group since 2002.

Opposition and appeal proceedings before the European Patent Office; legal opinions and litigation in the fields of biotechnology, food chemistry and pharmaceuticals. Particular experience with patents/applications relating to genes, proteins, transformed eukaryotic and prokaryotic cells, transgenic animals and plants and in vitro screening and diagnostic methods. Involved in opposition/appeal proceedings on erythropoietin (T412/93), antisense RNA (T994/95), reach-through claims (T609/02) among others; cross-border litigation on alpha-interferon and involvement in several due diligence evaluations on the IP assets of established biotech firms and start-ups

Jonathan Z. Yuan - Jonathan is a managing partner for US & European IP Practice at Shangcheng & Partners, an intellectual property law firm located in Beijing with a branch office in Shanghai. Jonathan is a U.S. patent attorney registered to practice before the United States Patent and Trademark Office. He is also an attorney at law admitted in New York and Connecticut. Jonathan's practice focuses on patent counseling, strategies, search and analysis, opinion, procurement, patent litigation/ITC 337 actions and licensing in technology fields including life sciences, pharmaceuticals, material sciences, medical devices and electronics. He counsels various clients, most of which are based in US and Europe, ranging from multinational pharmaceutical companies to start-ups and academic institutions

Jonathan obtained his B.S. in biology from Peking University, China. He was later trained in a master of medicine program at Peking Union Medical College in Beijing and a Ph.D. program on cell and molecular biology in City University of New York. He earned his master’s degree in biology from City College of New York and his J.D. from St. John’s University School of Law in New York. Prior to pursuing his legal career, Jonathan conducted research in molecular and developmental biology at Cold Spring Harbor Laboratory.

Before joining Shangcheng, Jonathan was a partner at one the largest IP law firms in China as well as the head of the firm’s Shanghai office. Before that, Jonathan was an attorney with a large international law firm based in US and a representative/visiting attorney at the firm’s Shanghai and Beijing offices. Jonathan started his legal career at a well-known IP boutique in New York.

Jonathan is frequently invited to speak in international IP conferences and was interviewed by major media in US and China on various IP issues. He was one of the key organizers behind several high-profile IP forums in China. Jonathan is an author/a co-author of numerous scientific and legal publications, including an article featured on cover of China Law and Practice (2010), Chapter of “Patent Law” in the book Doing Business in China (2010), and a research article featured on cover of Cell (1998) as well as other peer-reviewed articles on journals Development, Proc Natl Acad Sci USA, and Genes & Development. Jonathan is a co-inventor on a PCT application filed in the US.

Jonathan is a member of AIPLA, INTA and AUTM.