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Shann Kerner, Ph.D.

Partner
Boston
+1.617.261.3137
Fax +1.617.261.3175

Primary Practice

Secondary Practices

Education

  • J.D., Suffolk University Law School, 1993
  • Ph.D., University of Connecticut, 1983, (Biomedical Sciences: Molecular Biology and Biochemistry)
  • A.B., Boston University, 1975, (magna cum laude with Distinction in Biology)

Admissions

  • Bar of Massachusetts
  • U.S. Patent & Trademark Office
  • Biography Overview
  • Additional Background
  • Representative Work
Dr. Shann Kerner is a partner in the firm’s Boston office. Dr. Kerner works with emerging, mid-sized, and public biotechnology, pharmaceutical, and medical device companies, and with universities, advising them on the development, protection, and leveraging of their IP portfolios.

Dr. Kerner’s areas of technical concentration include molecular biology, microbiology, biochemistry, gastroenterology, orthopedics, immunology, virology, and nanotechnology. Her clients are in the fields of cancer and inflammatory disorders, early and late stage disease diagnostics and therapeutics, gastroenterology, neurology, stem cells, nanotechnologies, ophthalmology, pharmaceuticals, and medical devices.

Professional Background

Dr. Kerner’s legal practice includes IP portfolio counseling, domestic and foreign patent procurement, re-examinations, oppositions, IP audits, infringement, validity, patentability, inventorship, and landscape opinions and analysis, IP diligence for corporate mergers and acquisitions, pre-litigation counseling and IP litigation support. Prior to joining K&L Gates, Dr. Kerner was a partner in the Intellectual Property Dept. of WilmerHale. Previous to her legal career, Dr. Kerner was a faculty member at Harvard Medical School and held a joint appointment in the Neuroscience Department at Children’s Hospital, Boston.

Professional/Civic Activities

  • Member of the Board of Directors, US/Russia Chamber of Commerce, New England
  • Boston Patent Law Association (BPLA), Co-Chair of the Biotechnology Committee (2008-2010)
  • American Intellectual Property Law Association (AIPLA)
  • American Association for the Advancement of Science (AAAS)
  • Boston Bar Association (BBA)

Speaking Engagements

Dr. Kerner has lectured on IP issues relating to post-licensing IP issues, the maximization of patent value, differences in patent practices worldwide, and current developments in IP law including:
  • “The Evolving Aftermath of Licensing Agreements: Keeping Track of What is Important to Ensure Their Success,” K&L Gates/BDO USA Seminar, Newark, NJ, October 12, 2011.
  • “The Evolving Aftermath of Licensing Agreements: Keeping Track of What is Important to Ensure Their Success,” K&L Gates/BDO USA Seminar, Boston, MA, June 7, 2011.
  • “Post Licensing Issues: What Happens After the License is Signed,” AUTM Eastern Regional Meeting, Boston, MA, May 24, 2011.
  • “U.S./Russia Cross-border Opportunities in the Life Sciences Industry,” K&L Gates Seminar, Boston, MA, May 5, 2011.
  • “Creating and Monetizing Intellectual Property,” K&L Gates Seminar, Moscow, Russia, February 22, 2011.

Additional Information

Dr. Kerner completed a post-doctoral fellowship at Harvard Medical School (1983-1986).
  • Procurement and management of University patent portfolios
  • Creation of affiliate foreign companies based on U.S. IP
  • Growth and positioning of university patent portfolio for licensing
  • Creation of university spin-off company
  • Representation of branded pharmaceutical company in ANDA litigations
  • Representation of branded pharmaceutical company in an antitrust litigation
  • Representation of publicly traded biotech company in a patent infringement litigation
  • Offensive and defensive patent protection of products for emerging company
  • Pre-litigation counseling of medical device company
  • Strategic positioning of biotech company for cross-licensing or acquisition inventorship analysis for pharmaceutical company
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