Experience

Kevin Laurence provides patent-related services involving the life sciences, especially pharmaceuticals and medical devices, chemical fields, and other technologies. He focuses on portfolio management, all phases of patent procurement, preparation of noninfringement and invalidity opinions, product clearance analysis, due diligence evaluations and pre-litigation counseling. He uses his knowledge of U.S. and foreign patent systems to ensure that applications are prepared for multi-jurisdictional prosecution so that portfolios meet worldwide business objectives. He regularly conducts interviews with patent examiners at the U.S. Patent and Trademark Office to fully appreciate the views of the examiners, advocate for the positions of the patent applicants and negotiate regarding allowance so that pendency is minimized and the optimum value is obtained in each U.S. application.

He is experienced with post-grant proceedings for improving offensive and defensive positions including filing and prosecuting reissue applications, prosecuting applications being reexamined due to requests from third parties, and preparing requests for reexamination in conjunction with concurrent litigation and as a negotiation tool to avoid litigation. His ex parte reexamination and reissue practice is complemented by his extensive experience conducting examiner interviews during regular prosecution.

Prior to joining Stoel Rives as a partner in 2001, he worked for nearly a decade at Workman, Nydegger & Seeley, where he was a partner during 1997-2001.

Representative Work

Patent Procurement and Portfolio Management

• Developed worldwide strategies to build several portfolios with 100+ U.S. and foreign patents. Prepared and prosecuted several hundred patent applications to patent issuance.
• Conducted in-office interviews and successfully prosecuted key patent applications directed to small molecule pharmaceuticals.
• Advised a medical device company for more than a decade on building its patent portfolio, clearing products, and investment transactions.
• Participated on a team that built an extensive portfolio after identifying "white space" for a composite material.

Opinion Practice and Litigation Counseling

• Co-led a team involved in clearing a family of pharmaceutical compounds for clinical study.
• Provided an opinion that an independent claim in a patent asserted by a plaintiff was invalid since it was broadened during reexamination. This invalidity position resulted in a summary judgment for the defendant.

Post-Grant Proceedings

• After a client's key patent for a plastic film entered reexamination during litigation, Kevin succeeded in directing the simultaneous reexamination of the patent and prosecution of two related applications. His coordinated efforts resulted in the settlement of the case after a reexamination certificate issued and two patents were granted with commercially valuable claims.
• Prepared several requests for interference and interference motions. He crafted the technical basis for a settlement to interference litigation that followed an interference proceeding at the U.S. Patent and Trademark Office.

Professional Honors

• Selected as one of "America's Leading Lawyers for Business" (Utah) by Chambers USA (Intellectual Property) 2007-2009
  Chambers' commentary and quotes from clients and others:
  2009 - "gets high marks for expertise and client-care"
  2008 - "one of the best-known and best-loved life sciences attorneys in Utah. He is 'very easy to work with,' thanks to his broad experience and 'keen understanding of clients' wants and needs.'"
  2007 – "has developed an admirable reputation. Clients were especially impressed with his global outlook and strategy-making talents, and appreciated his close relationship with patent examiners and supervisors."
• Listed in Best Lawyers in America, 2007-2009
• Recognized in Mountain States Super Lawyers magazine, 2007-2009
• AV Peer Review Rated with Martindale-Hubbell, 2002-2010
• Recognized in Utah Business magazine's "Utah Legal Elite—Intellectual Property," 2004-2010, and "Forty Under 40," 2005

Professional Activities

• Member, Committee on Patent Office Inter Partes Proceedings, 2010, and Committee on U.S. Patent Law, 2008-2009, of the Intellectual Property Owners Association
• Member, Chemical Practice Committee of the American Intellectual Property Law Association, 2004-2010
• Member, US Bar – EPO Liaison Council, 2008-2010
• Chair, Intellectual Property Section of the Utah State Bar, 2003-2004
• Chair, 2000-2001, and Board Member, 1996-2002, Salt Lake Chapter of the J. Reuben Clark Law Society

Legal Teaching

• Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, 2009-2010
• Adjunct professor of law, S.J. Quinney College of Law, University of Utah, "Biotechnology and Chemical Patent Law," 2003, 2006 and 2008, and "International Intellectual Property Law," 2005 and 2007
• Adjunct professor of law, J. Reuben Clark Law School, Brigham Young University, "Intellectual Property Law," 2004

Presentations

• Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Indian Wells, California, scheduled for Oct. 3-5, 2010
• Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Bonita Springs, Florida, scheduled for Apr. 15-17, 2010
• Presenter, "Overview of Patent Reexamination and Reissue," IP Section of the King County Bar Association, Seattle, Washington, scheduled for Feb. 3, 2010
• Presenter, "Post-Grant Practice Primer," Oregon Patent Law Association, Portland, Oregon, Dec. 7, 2009
• Presenter, "Obviousness for Drug Compounds and Formulations," Danish Patent Office, Taastrup, Denmark, Nov. 11, 2009
• Presenter, "Comparison of Oppositions and Reexaminations," Danish Patent Office, Taastrup, Denmark, Nov. 11, 2009
• Presenter, "Reexaminations and Post-Grant Review Proceedings," IP Section of the Utah State Bar, Salt Lake City, Utah, Oct. 23, 2009
• Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Las Vegas, Nevada, Oct. 4-6, 2009
• Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Orlando, Florida, Apr. 23-25, 2009
• Presenter, "Reissue Practice," SIPLA at Santa Clara University School of Law, Santa Clara, California, Mar. 17, 2009
• Presenter, "Ownership of an Employee's Invention," Business Law Section of the Utah State Bar, Salt Lake City, Utah, May 10, 2007
• Presenter, "Supreme Court's Review of the Obviousness Test," Utah IP Summit, Salt Lake City, Utah, Feb. 16, 2007
• Presenter, "Supreme Court's Review of the Obviousness Test," Oregon Patent Law Association, Portland, Oregon, Dec. 6, 2006
• Presenter, "Supreme Court's Review of the Obviousness Test," Orange County Patent Law Association, Costa Mesa, California, Oct. 25, 2006
• Presenter, "Patent Issues Unique to Nanotechnology Development," nanoUtah Conference, Salt Lake City, Utah, Oct. 5, 2006
• Presenter, "Ownership of an Employee's Invention," Utah State Bar's Annual Convention, Newport Beach, California, Jul. 14, 2006
• Presenter, "Claim Construction of Markush Groups and Other Alternative Limitations," Sixth Advanced Forum on Biotech Patents, American Conference Institute, San Francisco, California, Feb. 16, 2006
• Workshop co-leader, "Building and Managing Patent Portfolios in the Life Sciences," Henry Stewart Conference Studies, San Francisco, California, Sep. 27, 2005

Civic Activities

• Member, National Advisory Council for Invent Now Kids, a subsidiary of the National Inventors Hall of Fame Foundation, 2009-2010
• Member, Advisory Council for the Centers of Excellence program of the State of Utah, 2009
• Founding organizer and Chair, 2002-2006, Utah Innovation Awards program

Publications

• "Post-Grant Options for Patent Owners," (co-author) Intellectual Property Today, January 2010
• "Patent Reexamination and Reissue Practice," (co-author) Patent Resources Group, 2009

Education

• J. Reuben Clark Law School, Brigham Young University, J.D., 1992
• Brigham Young University, B.A., Chemistry, 1989

Admissions

• Utah
• Washington (pending)
• U.S. Court of Appeals for the Federal Circuit
• U.S. District Court for the District of Utah
• U.S. Patent & Trademark Office
• U.S. Supreme Court

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