Roger Kuan

Partner
Norton Rose Fulbright US LLP

San Francisco
United States
T:+1 628 231 6810
San Francisco
United States
T:+1 628 231 6810
Roger Kuan

Roger Kuan

vCard

Biography

Roger Kuan is the US head of the digital health and precision medicine practice and counsels companies that are uniquely positioned in the convergence of the life/medical sciences and technology industries on how to successfully navigate the complexities of the intellectual property (IP), data rights and regulatory challenges they encounter.

Roger has extensive experience in IP strategy and portfolio management (utility/design patents, trademarks, copyrights and trade dress), data rights strategy, licensing and technology transactions, freedom-to-operate clearances, enforcement, monetization, IP due diligence and dispute resolution. His practice is focused in the life sciences sector (e.g., research tools, analytical instrumentation/software, digital therapeutics, medical devices, diagnostics, biomanufacturing equipment, etc.) with an emphasis in emerging technologies such as Precision Medicine (e.g., genomic sequencing platforms, AI/ML, computational genomics/bioinformatics, molecular diagnostics, companion diagnostics, etc.), Digital Health (e.g., mobile apps, clinical decision support, software, digital therapeutics, AI/ML Imaging Diagnostics, wearables, etc.) and 3D printing/bioprinting.

Earlier in his career, Roger served as Director, IP Counsel at a multinational biotechnology company, where he managed a team to support the worldwide IP needs of the company's life sciences tools, bioproduction, molecular diagnostics and nucleic acid sequencing system/software platforms. Prior to finishing his law degree, he worked in the life sciences industry for several Fortune 500 pharmaceutical, medical device and chemical companies. He has held professional positions in the R&D, sales, engineering and regulatory affairs organizations.


Professional experience

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  • JD, Santa Clara University School of Law, 2004
  • MS, Environmental Engineering (Biochemical Engineering emphasis), with honors, California State Polytechnic University, 1999
  • BS, Toxicology, University of California Davis, 1995
  • California State Bar
  • US Patent and Trademark Attorney
  • Developed IP protection strategy for a leading molecular diagnostics company to protect the proprietary AI/ML proteomics-based diagnostics platform for infectious disease and oncology applications.
  • Developed IP strategy and built out patent estate (in-house and in-licensed) for a 3D bioprinting company that commercialized a 3D bioprinting platform for regenerative medicine applications (e.g., tissue, organs, etc.) that was subsequently acquired by a global 3D printing company for $400 million.  
  • Built out a patent estate to protect the AI/ML imaging and genomic diagnostics test pipelines of a leading AI/ML diagnostics company.
  • Built out patent estate to protect AI/ML digital health innovations (molecular diagnostic, imaging diagnostic, companion diagnostic, and drug discovery) for a global biopharmaceutical company.
  • Negotiated and drafted master collaboration agreements for companies and healthcare systems involving the sharing of genomics data and protected health information.
  • Analyzed patent estates and performed freedom-to-operate clearances for digital health-related investments of a global pharmaceutical conglomerate.
  • Developed IP protection strategy and 24-month IP-gated timelines for a biotech analytics company using multi-omic data from the human gut microbiome to discover biomarkers and novel therapeutics.
  • Developed IP protection strategy, 24-month IP budgets, and associated IP-gated timelines for a health tech company using contactless sleep tracker technology and artificial intelligence (AI) to enable early detection of respiratory failure.
  • Developed IP protection strategy, associated investor materials, and IP-gated timelines for a 3D printing company using proprietary software platforms to develop 3D printed anatomical models to improve pre-operative planning and corresponding patient outcomes.
  • Built out an IP estate to protect the hardware and software features of an advanced single-sided MRI technology company.
  • The Legal 500 US, Legalease Ltd., 2019
  • Quoted, "Is Big Pharma's Antidote to the COVID-19 Waiver a Viable Alternative?" Life Sciences IP Review, August 2, 2021
  • Interview, "Interview with Roger Kuan, Intellectual Property Concern for Healthcare 3D Printing," 3D Heals, July 16, 2021
  • Contributing editor, "Digital Health 2021," International Comparative Legal Guides (ICLG), January 3, 2021
  • Co-author, "Life Sciences Considerations Regarding Compulsory Licensing, March-In Rights, and the Defense Production Act During COVID-19," Intellectual Property & Technology Law Journal, Volume 33, No. 1, January 2021
  • Quoted, "Biosimilars Caught in Crosshairs of Supreme Court ACA Fight," Law360, November 9, 2020
  • "Adopting AI in Health Care Will be Slow and Difficult," Harvard Business Review, October 18, 2019
  • "Patent Protection for Medical 3D Printing & Bioprinting Technologies," 3DHeals, September 2019
  • Speaker, "3D Bioprinting for Food," 3DHEALS webinar, September 23, 2021
  • Speaker, "The Legal Landscape in Healthcare 3D Printing," 3DHEALS webinar, July 29, 2021
  • Moderator, "Digital Health: Insights Into Today's Key Healthcare Data Issues," ICLG.com webinar, July 6, 2021
  • Speaker, "The Business of Alt Protein: Intellectual Property for Alternative Protein Companies," Good Food Institute (GFI) webinar, June 16, 2021
  • Speaker, "Will Biden Backed Bills Boost Biosimilars Uptake in the U.S.?" The BioPharma Pod, May 7, 2021
  • Panelist, "AI Patenting and Licensing," The University of Texas Technology Management Council Meeting, April 16, 2021
  • Speaker, "Digital Health Innovations – What They Are, How to Protect Them, and Commercialization Strategies," Weill Digital Health Series webinar, March 12, 2021
  • Speaker, "Use of AI in Healthcare," AI Chats podcast, March 1, 2021
  • Contributor, "Navigating Legal Issues in Emerging Technologies in Healthcare & Life Sciences," UCSF Rosenman Institute Expert Consults, January 19, 2021
  • Panelist, "The State of Artificial Intelligence in Healthcare," Harvard AI in Healthcare Group Panel, November 17, 2020
  • Speaker, "Telehealth and Other Advancements in Healthcare Technology Spurred by COVID-19," DahShu Online Seminar, November 13, 2020
  • Speaker, "Intellectual Property and 3D Printing Medical Devices and Bioprinting," 3DHEALS 2020, June 6, 2020
  • Speaker, "Regulatory/Legal Challenges," 3DHEALS 2020, June 6, 2020
  • "Negotiating Term Sheets," Redefining Early Stage Investments (RESI) Conference, January 2020 (San Francisco)
  • "Everything You Need to Know About Digital Health," Cedars-Sinai Accelerator, November 2019
  • "Negotiating Term Sheets," Redefining Early Stage Investments (RESI) Conference, June 2019 (Philadelphia)
  • "IP Protection Strategies for Personalized/Precision Medicine," BIOCOM, November 2018 (San Francisco)
  • "Advanced Patent Prosecution Workshop 2018: Advanced Claim Drafting Issues (Personalized/Precision Medicine)," Practicing Law Institute (PLI), September 2018 (San Francisco)
  • "Operation Valuation: Maximizing the Value of your Asset Portfolio," Redefining Early Stage Investments (RESI) Conference, June 2018 (Boston)
  • Member, National Asian Pacific Bar Association
  • President, Norris Canyon Estates Homeowners Association Board

Knowledge

Digital Health 2022

Blog | March 08, 2022

Digital Health 2022

Publication | February 25, 2022

Digital Health ICLG interview with Roger Kuan

Video | April 08, 2022