The Biotech Startups Podcast 🧬 Kate Neville - Part 4 | Balancing IP Enforcement & Licensing | Leveraging Shelved Pharma Assets | Building Resilient IP Portfolios
Dec 19, 2024
31:48
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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:
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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 gives you a front-row seat to the business and science of building a biotech. Hosted by Jon Chee, CEO of Excedr, the show features honest conversations with founders, execs, and investors about their work, their companies, and how they got there. From scientific breakthroughs to startup lessons, each episode explores what it really takes to grow a life science company—from pre-seed to IPO.