Janet Xiao

Dr. Janet (Jian) Xiao is a partner in Morrison & Foerster’s Life Science Group residing in the Palo Alto office. She primarily represents clients in the biotechnology and pharmaceutical industries in their world-wide patent procurement, patent portfolio management, and strategic planning. Dr. Xiao advises biopharmaceutical companies and research institutions on patent matters relating to various technologies including antibody therapeutics, nanomedicine, personalized medicine, drug delivery systems, drug screening platforms, diagnostics, and nutraceuticals. She also represents many start-up biopharmaceutical companies to help them build a strong IP position from inception.

Dr. Xiao has significant experience in developing and strengthening her clients’ complex patent portfolios to maximize their commercial value and success. She has been working with Abraxis BioScience, a nanotechnology-based pharmaceutical company, since 2005 to develop a strong patent portfolio to protect its proprietary NabTM technology and its leading anticancer drug, Abraxane®. The patent portfolio was a major component of the valuation underlying Abraxis’ $2.9 billion acquisition by Celgene in 2010, and Dr. Xiao continues to advise Celgene on the Abraxis patent portfolio after the acquisition.

Dr. Xiao works extensively in performing IP due diligence reviews in the contexts of VC investments, technology transactions, mergers and acquisitions, as well as marketing and manufacturing clearances for biopharmaceutical products. She works closely with Genentech, one of the world’s first and most successful biotechnology companies, in its strategic risk assessment of freedom to operate on various technologies.

Dr. Xiao also helps her clients devise strategies in the events of legal challenges by third party competitors or vice versa. She is often engaged in third party patent challenges, such as ex parte reexamination, inter parte reexamination, patent opposition, and patent litigation. She also prepares legal opinions on patent validity and freedom to operate, and conducts IP due diligence reviews for business transactions.

Dr. Xiao is among the very few IP attorneys who are both equipped with solid skills in global strategic IP management and knowledgeable about IP issue unique to China and Chinese clients. She is frequently called upon to advise clients on IP issues and conduct IP due diligence in US/China cross-border transactions and operations in China. She is also frequently invited to speak on IP issues both in the U.S. and in China.

In 2014 Dr. Xiao was listed in Chambers Global as a leading IP expert in the US and a leading IP lawyer in China as an expert based abroad. Chambers Global says that Janet “is held in high regard by sources for her deep understanding of the pharmaceutical and biotech industries, and is a notable patent practitioner. Her expertise in tackling China-based IP matters is a key selling point, as is her excellent approach to client service.”

Since 2005, Dr. Xiao has been actively involved in the leadership team of the Chinese-American Biopharmaceutical Society (CABS), a non-profit organization dedicated to bridging the life science communities in U.S. and China. She was president of CABS for the 2011-2012 term. Dr. Xiao is also a member of BayHelix, a non-profit organization comprised of Chinese heritage leaders in the global life sciences and healthcare community. Dr. Xiao serves on the advisory panels for the University of California, San Francisco Clinical & Translational Science Institute translational science program and the University of California Center for Accelerated Innovation. She also serves on the Department Accreditation Committee of the American Society of Biochemistry and Molecular Biology (ASBMB).

Good to know

Areas of Practice 1) Patent Counseling and Prosecution, 2) Patent Reexaminations and 3) Intellectual Property Litigation
Law School University of California, Berkeley, School of Law, J.D., 2003
Admitted Year 1997
Education Nanjing University, B.S., 1989
Bar Member / Association California State Bar Association
Most recent firm Morrison & Foerster LLP
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