🧬 Kate Neville - Part 4 | Balancing IP Enforcement & Licensing | Leveraging Shelved Pharma Assets | Building Resilient IP Portfolios

The Biotech Startups Podcast

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Part 4 of 4: In this episode, Jon Chee hosts Kate Neville, PhD, Partner at Marshall Gerstein—a law firm with over 60 years of expertise in delivering sophisticated intellectual property advice and legal services to leading businesses, research institutions, universities, and entrepreneurs worldwide.

Kate is an accomplished attorney with a doctoral background in microbiology and immunology who specializes in global patent prosecution and strategic management. She has over a decade of experience, and works with a wide range of clients, from biotech startups to big pharma to non-profits.

Kate has been recognized as a "World's Leading Patent Practitioner" by IAM magazine since 2013, an Illinois Super Lawyer since 2018, and is included in The Best Lawyers in America© for Patent Law.

In this episode, you’ll hear about:

• Why securing a patent is only the first step in IP protection
• Weighing litigation versus licensing to safeguard your IP
• Leveraging technology transfer and academic collaborations for innovation
• Driving innovation through incremental advancements in your IP portfolio
• Kate’s journey from scientist to partner, with insightful advice for those navigating career transitions

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Find Our Guest, Kate Neville, at these links:

https://www.linkedin.com/in/kate-neville-phd/

https://www.marshallip.com/

Find Our Host, Jon Chee, at these links:

https://www.linkedin.com/in/jonchee

https://www.excedr.com

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Podcast Website: https://www.thebiotechstartupspodcast.com/

Enriched Notes:

Topics Mentioned:

Marshall Gerstein: https://www.marshallip.com/

IP Enforcement Strategies: https://www.wipo.int/en/web/ip-enforcement/

IP Strategies for Biotechs: https://www.excedr.com/resources/intellectual-property-strategy-for-biotechs

IP Rights to Understand: https://www.excedr.com/resources/intellectual-property-rights-for-biotechs

Intellectual Property 101: https://www.excedr.com/resources/intellectual-property-guide

Tech Transfer 101: https://www.excedr.com/blog/what-is-tech-transfer

Patent Licensing 101: https://www.excedr.com/resources/how-patent-licensing-works

Guide to Life Sciences Licensing: https://www.excedr.com/blog/life-sciences-licensing-agreements-guide

Biotech Startup Support: https://www.excedr.com/resources-category/biotech-startup-support

Timestamps:

00:00 Intro

02:04 The challenges of enforcing IP protections

03:46 Balancing litigation and licensing as a business decision

07:13 Technology transfer breakdown and how to secure your next big idea

09:07 Exploring shelved pharma compounds as IP opportunities

11:29 Avoiding common IP pitfalls for biotech startups

14:10 The value of fresh perspectives in biotech entrepreneurship

16:35 Challenges of transitioning from the bench to law practice

20:52 Insights into life as a partner in an IP law firm

23:09 2-year vision at Marshall Gerstein

26:42 Closing questions and advice for biotech founders

29:47 Outro

The Biotech Startups Podcast is handcrafted by our friends over at: fame.so