Kevin B. Laurence

Experience

Kevin Laurence provides patent-related services involving the life sciences, especially pharmaceuticals and medical devices, chemical fields, and other technologies. He focuses on all phases of patent procurement, post-issuance administrative proceedings, portfolio management, preparation of noninfringement and invalidity opinions, product clearance analysis, due diligence evaluations, and pre-litigation evaluations and strategic counseling for asserting patent rights or responding to patent infringement allegations.

Kevin acts as reexamination counsel in proceedings at the U.S. Patent and Trademark Office and is experienced with the issues involved in concurrent litigation. He provides comprehensive counseling for defending the validity of clients' patents and challenging the validity of patents owned by clients' competitors. He also files and prosecutes reissue applications.

Kevin teaches a comprehensive three-day course on post-grant proceedings titled Post-Grant Patent Practice: Review, Reexamination, Reissue and Supplemental Examination for the Patent Resources Group and co-authors the treatise provided in conjunction with the course. He also co-authors a monthly column on post-grant review proceedings, inter partes review proceedings, reexamination, reissue and supplemental examination for Intellectual Property Today. By actively writing and lecturing on these topics, Kevin remains current on all aspects of post-issuance administrative proceedings.

Prior to joining Stoel Rives as a partner in 2001, he worked 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) 2007-2011
Chambers' commentary and quotes from clients and others:
2011 – "Market sources are full of admiration for Kevin Laurence, who impresses with his record in building patent portfolios. He has developed a particular niche in reexamination work."
2010 – "Renowned as 'a talented attorney who understands the intricacies of business' he excels in the pharmaceutical, medical devices, chemicals and life sciences fields."
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, 2007-2012
Recognized in Mountain States Super Lawyers magazine, 2007-2011
AV Peer Review Rated with Martindale-Hubbell, 2002-2011
Recognized in Utah Business magazine's "Utah Legal Elite—Intellectual Property," 2004-2011, and "Forty Under 40," 2005

Professional Activities

Member, Committee on Patent Office Inter Partes Proceedings, 2010-2011, and Committee on U.S. Patent Law, 2008-2009, of the Intellectual Property Owners Association
Member, USPTO Inter Partes Proceedings, 2010-2011, and Chemical Practice Committee of the American Intellectual Property Law Association, 2004-2011
Member, US Bar – EPO Liaison Council, 2008-2011
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, "Post-Grant Patent Practice: Review, Reexamination, Reissue and Supplemental Examination," Patent Resources Group, scheduled for 2012
Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, 2009-2011
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, "Post-Grant Patent Practice: Review, Reexamination, Reissue and Supplemental Examination," Patent Resources Group, Bonita Springs, Florida, scheduled for Mar. 29-31, 2012
Panelist, "USPTO Post-Grant Proceedings After New Patent Reform Law," Strafford Publications, webinar, September 28, 2011
Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Naples, Florida, Apr. 14-16, 2011
Presenter, "Patent Validity Challenges and Patent Reform Legislation," IPSA at the University of Michigan Law School, Ann Arbor, Michigan, Mar. 14, 2011
Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Palm Springs, California, Oct. 3-5, 2010
Presenter, "Pharmaceuticals and Biotechnology: PTO's 2010 Obviousness Guidelines," Chartered Institute of Patent Attorneys, London, United Kingdom, Sept. 22, 2010
Presenter, "Merger and Suspension of Concurrent Inter Partes Reexamination and Reissue Proceedings," Committee on Patent Office Inter Partes Proceedings of the Intellectual Property Owners Association, Aug. 17, 2010
Instructor, "Patent Reexamination and Reissue Practice," Patent Resources Group, Bonita Springs, Florida, Apr. 15-17, 2010
Panel Moderator, "Reexamination Tips and Strategies" – a panel discussion featuring Gregory Morse, the Director of the Central Reexamination Unit, Oregon Patent Law Association, Portland, Oregon, Mar. 15, 2010
Panel Moderator, "Perspectives of Feedstock Suppliers on the Bio-based Chemical Value Chain," Infocast's Bio-Based Chemical Conference, San Diego, California, Feb. 10, 2010
Presenter, "Overview of Patent Reexamination and Reissue," IP Section of the King County Bar Association, Seattle, Washington, Feb. 4, 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, "Reexamination 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, "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, 2009-2010
Member, Advisory Council for the Centers of Excellence program of the State of Utah, 2009-2011
Founding organizer and Chair, 2002-2006, Utah Innovation Awards program

Publications

Treatises

"Post-Grant Patent Practice: Review, Reexamination, Reissue, and Supplemental Examination" (coauthor), Patent Resources Group, (available in 2012)
"Patent Reexamination and Reissue Practice" (coauthor, 500+ pages), Patent Resources Group, 2009-2011

Articles