Global law firm K&L Gates LLP welcomes intellectual property partners Roger C. Kuan and Jason J. Novak to its Palo Alto and San Francisco offices, respectively. They join K&L Gates from Thermo Fisher Scientific, where they each served as Director/IP Counsel, helping to manage the company’s intellectual property team and matters.
Their practice will focus on IP transactions, diligence, procurement, and portfolio management for clients in the biotech (with emphasis in life sciences tooling), analytical instrumentation, software (with emphasis in bioinformatics), bioprocessing/biomanufacturing, nucleic acid sequencing, chemical, mechanical, medical device, molecular diagnostics, nanotechnology, optics, food, and semiconductor industries.
Kuan’s broad experience in intellectual property matters encompasses the areas of IP preparation, prosecution, litigation, freedom-to-operate clearances, M&A due diligence, counseling, licensing, and technology transactions. This includes preparing and prosecuting patent applications, providing direction on the procurement of trademarks and trade dress registrations, and counseling on the creation of patent portfolios for emerging technologies and/or new products, strategic patent acquisitions, open source software clearances, and patent strategy. He advises on a variety of complex litigation matters, including patent infringement disputes, inter partes and ex parte re-examinations, patent interferences, and transactional disputes.
At Thermo Fisher Scientific, Novak was responsible for, and advised business leaders on, all IP matters impacting various life sciences instrumentation businesses, including quantitative polymerase chain reaction (qPCR), digital PCR, capillary electrophoresis, DNA sample prep, and related software initiatives. Novak built and oversaw company patent portfolios; drafted and prosecuted patent applications; managed U.S. and foreign patent matters, including numerous oppositions; and negotiated complex IP and technology agreements, including collaboration, consulting, and settlement agreements as well as inbound and outbound licenses. Previously an associate at K&L Gates and legacy firm Bell Boyd & Lloyd from 2006 to 2011, Novak also developed and executed comprehensive IP diligence programs for out-licensing purposes and supported Thermo on litigation matters related to his responsible businesses.
“We are glad to have Jason back on our team,” said Robert Barrett, a firmwide leader for K&L Gates’ global intellectual property practice and a partner in the firm’s Chicago office. “Together with Roger, they will further augment our burgeoning cutting-edge West Coast IP practice.”
K&L Gates’ IP procurement and portfolio management practice has more than 225 lawyers, including approximately 100 registered patent lawyers, agents, and technology specialists with technical or advanced science degrees, who advise clients in creating, developing, and leveraging patents, trademarks, copyrights, trade secrets, and other rights to protect their intellectual property assets.
Source: www.klgates.com
