🧬Kate Neville - Part 3 | Fundamentals of IP Strategy for Biotechs | Safeguarding Discoveries & Technology | Aligning Science with Patents | Navigating Global Patent Considerations

The Biotech Startups Podcast

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Part 3 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:

• Building a strong foundation for your IP and the importance of well-crafted provisional applications.
• Aligning scientific advancements with proactive patent strategies to maximize long-term value.
• The critical timing for startups to address IP concerns, from tech transfer to scaling operations.
• The nuances of international patenting and strategic decisions on global protections.
• Practical tips for founders on prioritizing IP investments to strengthen their company and attract investors.
  

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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/

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

How to Protect Your IP in the Life Sciences: https://www.excedr.com/resources/how-to-protect-your-intellectual-property

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

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

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

Resources for Biotech Startups: https://www.excedr.com/resources/

Timestamps:

00:00 Intro
02:09 How to approach intellectual property (IP) as a biotech startup

05:06 When to start thinking about your IP portfolio and strategy

08:52 How much time does it take to protect your IP, and what are the phases?

11:26 Some best practices for global IP protections

14:07 Importance of patents to investors, and the timing behind raising capital

15:54 How does IP strategy differ from company to company?

17:37 Patent offices’ outlook on broad platform protections

22:18 Thought process behind picking which IP to hold or sell

25:01 Fundamental aspects of a solid IP strategy

29:08 Outro

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