Gina Shishima is Head of IP Transactions and Patent Prosecution, United States.
Gina's practice is in the area of patent law – both transactional and litigation – with a primary focus in the biotechnology field. She has patent prosecution experience that includes preparing and prosecuting utility patent applications, as well as involvement in reexaminations, interferences and European oppositions. Other experience includes a wide variety of involvement in patent litigation matters and licensing issues. In addition, Ms. Shishima has experience in patentability opinions, freedom to operate evaluations, intellectual property due diligence and competitive technology assessments.
In the course of her patent litigation and prosecution work, Ms. Shishima has worked on a variety of areas in biotechnology and pharmaceutics such as: therapeutics, diagnostics, and prognostics, nucleic acid and protein therapies, small molecule therapies, immunotherapies, virus-based applications, therapeutic formulations and delivery systems, vaccine applications, transgenic organisms, drug screening, molecular biology reagents, and pharmacogenomics (personalized medicine). In addition, her litigation and prosecution experience extends into the areas of medical devices and apparatuses (including PET scanning technology, radiation phantoms, stents and microfluidics sensor technology), business patents and computer hardware.
[+Open all]
-
Education
1998 - JD, School of Law at University of California, Berkeley
1995 - PhD, Molecular Biology, Princeton University
1989 - AB, Biochemistry, Columbia University
While attending Boalt Hall School of Law, Gina was a member of the California Law Review and an associate editor for the Berkeley Technology Law Journal. She is a member of the Texas and New York bars and admitted to practice in the Western and Eastern Districts of Texas, the Southern and Eastern Districts of New York, and the Court of Appeals for the Federal Circuit. She is registered to practice before the United States Patent and Trademark Office.
-
Representative experience
Patent Prosecution
-
Lead counsel on managing international patent portfolios and prosecuting patent applications on core technology for biotechnology companies
-
Lead counsel on managing international patent portfolios and prosecuting patent applications in area of biotechnology and medical devices for universities and companies
-
Lead counsel on successful appeals before Board of Patent Appeals and Interferences
-
Lead counsel for re-examined patent covering commercial technology in area of pharmacogenomics
-
Co-counsel in patent interference matter involving cancer gene therapy in which other party conceded priority
-
Contributing counsel for patent owner in defending against opposed European patent
-
Contributing counsel in successfully opposing European patents
Patent Litigation
-
Co-counsel in two DNA genotyping case that settled favorably for client after obtaining a temporary restraining order and preliminary injunction in one case and favorable Markman ruling in other
-
Co-counsel in enforcing patents relating to pharmaceutical compositions
-
Co-counsel in patent litigation matter involving DNA technology
-
Co-counsel representing defendant in patent litigation involving communications services
-
Co-counsel in pre-filing investigation for patent infringement action against generic manufacturer in paragraph IV ANDA certification case
-
Associate on several different patent litigation matters involving transgenic corn, computer hardware, and biotechnology enzyme reagent.
Patent Due Diligence
-
Lead counsel for large life sciences/pharmaceutical company in due diligence matters involving biotechnology or chemical compounds
-
Lead counsel for due diligence matters relating to medical apparatuses or other mechanical devices
-
Lead counsel for due diligence related to licensing technology in medical apparatus and biotechnology areas
-
Counsel for due diligence matter in connection with multi-billion dollar acquisition of biotechnology company
-
Co-counsel for large company in due diligence relating to settlement of patent infringement lawsuit
-
Professional activities
-
American Intellectual Property Law Association (AIPLA)
-
Austin Intellectual Property Law Association (AIPLA)
-
Association of University Technology Managers (AUTM)
-
National Asian Pacific American Bar Association (NAPABA) Board of Governors, Southwest Regional Governor; Women's Leadership Committee Co-Chair
-
Austin Asian American Bar Association (AAABA), Council Member
-
State Bar of Texas, member of Asian Pacific Interest Section (APIS)
-
Asian American Bar Association of New York (AABANY), IP Committee member
-
American Bar Association
-
Travis County Bar Association
-
Professional honors
-
Best Lawyers "Lawyer of the Year" – Austin Biotechnology Law (2012)
-
"IP Star," Managing Intellectual Property (2013)
-
"IAM Patent 1000 - The World's Leading Patent Professionals" Intellectual Asset Management (2013)
-
The Best Lawyers in America, Biotechnology Law (2007 - 2013), Intellectual Property Law (2010, 2011), Litigation – Patent (2012, 2013) and Patent Law (2012, 2013)
-
Travis County Women Lawyers Association, 2012 Pathfinder award
-
"500 New Stars, New Worlds," Lawdragon (2006)
-
Super Lawyers, Thomson Reuters
-
"Texas Super Lawyer" (2012)
-
"Rising Star" (2004, 2007)
-
Speaking engagements
-
"Intellectual Property Best Practices for Your Clients and Their Business," panelist, Austin Asian American Bar Association CLE presentation, November 9, 2011
-
"M&A in 2011: Maximizing Value with Effective IP Due Diligence," Fulbright & Jaworski L.L.P. web seminar, February 17, 2011
-
Panelist, "The Future of Personalized Medicine," Healthcare Businesswomen's Association, San Antonio Chapter, Austin, Texas, October 7, 2010
-
"Analysis of Today's In re Bilski Decision from the Supreme Court: Its Impact on Patents from Business Methods to Biotechnology," Fulbright & Jaworski L.L.P. web seminar, June 28, 2010
-
"Patent Reexaminations: Essential Strategy Considerations," Fulbright & Jaworski L.L.P. web seminar, April 27, 2010
-
"Ethics and Equitable Conduct: Procuring Enforceable Patents," AUTM Annual Meeting, New Orleans, Louisiana, March 18, 2010, and Professional Development Program web seminar, January 26, 2010
-
"Offensive/Defensive Use of Ex Parte Reexamination, " Practising Law Institute, San Francisco, January 11, 2010; New York (by webinar), February 11, 2010; and, Chicago, March 11, 2010
-
"Patent Strategy Considerations for Medical Diagnostic and Treatment Claims," Fulbright & Jaworski L.L.P. web seminar, July 14, 2009
-
"The Role of Intellectual Property in Personalized Medicine," ABA-IP Section Annual Meeting, Alexandria, Virginia, April 2009
-
"How To Protect in vitro Diagnostic Inventions in Light of In re Bilski," Licensing Executive Society (LES) Winter 2009 meeting, San Antonio, Texas, February 2009
-
"Fundamentals of Effective Patents," Corporate Executive Board's General Counsel Roundtable teleconference, July 2008
-
"Evolving Patent Strategies: Top Ten Questions To Ask When Filing and Prosecuting," Association of University Technology Managers (AUTM) meeting, San Diego, California, February 2008
-
Panelist, Texas Diversity Council, Women in Leadership, Austin, Texas, February 2008
-
"Patent Issues Related to Biodefense Product Development and Licensing," Great Lakes Regional Center of Excellence Workshop, Chicago, Illinois, August 2006
-
"Exerting UT Ownership Rights: When and How," University of Texas Technology Management Council Meeting, Austin, Texas, June 2006
-
Publications
-
Co-author with Jamie Hu, "Federal Circuit Holds That Isolated DNA Molecules Are Patentable, But Questions Remain for Medical Diagnostic Method Claims," Fulbright & Jaworski L.L.P. Client Alert, August 1, 2011
-
Lead author with Tamsen Barrett, "Intellectual Property for Alternative Medicine," Alternative and Complementary Therapies for Cancer, Moulay Alaoui-Jamali, ed., (Springer) Spring 2010
-
Co-author with Tom Meaney, Thomas Kelton, Mark Garrett and Daniel Leventhal, "Supreme Court Issues Bilski – Business Methods Still Eligible, Federal Circuit to Address Further Business and Biotech Claims," Fulbright & Jaworski L.L.P. Client Briefing, June 2010
-
Co-author with Allen White, "'Isolated DNA' and Genetic Testing Ruled Ineligible for Patent Protection," Fulbright & Jaworski L.L.P. Client Briefing, April 2010
-
"Offensive/Defensive Use of Ex parte Reexamination," in Reissue and Reexamination Strategies and Tactics with Concurrent Litigation, PLI, 2010
-
Civic involvement
-
Pro bono work for the Texas Life Science Center (TLSC)
-
Pro bono work on habeas corpus petition
-
Licenses
- New York State Bar License
- Texas State Bar License
-
Interests
Gina enjoys spending time with her husband, a professor of philosophy at the University of Texas at Austin, and their three children – a son and twin girls.
-
Related publications
In Association for Molecular Pathology v. U.S. Patent & Trademark Office, No. 2010-1406 (Fed. Cir. July 29, 2011), the Federal Circuit overturned a ....
2011-08-01
The best IP deal for your company is the one that gets you the most bang for your buck. Getting the most value out of a deal—or wisely deciding not t....
2011-02-17