Gladys H. Monroy

Dr. Gladys Monroy's practice includes strategic counseling, comprehensive patent portfolio management, interferences, reexaminations, and reissues. Her practice also includes conducting due diligence studies in connection with venture capital, private and public financing, mergers and acquisitions, opinions on patentability, non-infringement and patent validity, and counseling during product development. Dr. Monroy represents companies of all sizes in the areas of patent prosecution and technology transfers involving many technologies within field of life science.

One of Dr. Monroy's key ongoing clients is Chiron Corp., for whom she wrote seminal patents for the company's HCV technology. The work in which she was involved led to the development of blood-screening technology to detect Hepatitis C. She has made numerous arguments before the USPTO in connection with Chiron's HCV patents, and her efforts, including those over the past several years, have aided Chiron in licensing its HCV technology internationally. The HCV assay is now available commercially in 16 countries.

Dr. Monroy also provides patent counseling and portfolio strategy to many companies, including Palo Alto-based Genencor Corp.; Seattle-based gene therapy company Targeted Genetics Corp.; Macquarie Park, Sydney, Australia-based Arana Therapeutics Limited, formerly Peptech; and Concord, California-based Cerus Corporation. She has also handled patent interference proceedings for her clients before the USPTO, many of which have led to favorable settlements.

She also regularly works with biotech companies still in their infancy, conducting due diligence studies in connection with venture capital and financing, and counseling during product development. One such company is Aurora, Colorado-based Taligen Therapeutics, which is developing treatments for inflammatory diseases such as asthma. Taligen received a $65 million Series B financing in preparation for clinical trials for its products.

Dr. Monroy is a former Co-Chair of the firm's Intellectual Property practice.

Dr. Monroy also has held numerous leadership positions in intellectual property law associations, such as past President and Board of Directors member of the Silicon Valley Intellectual Property Law Association, and Executive Committee member of the California State Bar Intellectual Property Section. She was also elected to the IP Law & Business Patent Prosecution Hall of Fame. Global Practical Law Co. lists Dr. Monroy as a leading attorney in Health and Sciences.

Good to know

Areas of Practice 1) Intellectual Property, 2) Patent Counseling + Prosecution, 3) Life Sciences and 4) Patent Reexaminations
Law School University of San Francisco School of Law (J.D., 1986)
Education Hunter College CUNY (B.A., 1957), New York University (M.S., 1969), New York University (Ph.D., 1973)
Bar Member / Association State Bar Of California
Most recent firm Morrison & Foerster LLP
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Andrew Hamilton

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Barbara J. Shander
Barbara J. Shander

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