Karen S. Canady, Ph.D. is a founding partner of Canady + Lortz LLP.
Dr. Canady’s practice emphasizes biotechnology patent preparation and prosecution. She also counsels clients and prepares opinions relating to patentability, patent validity, infringement, freedom to operate, and other aspects of portfolio assessment. Some examples of her work include developing and prosecuting a portfolio of lentiviral gene delivery patents and applications that was sold by her client for $12 million, and evaluating a portfolio of antisense molecules to help a client close a deal involving a $45 million dollar upfront licensing fee and the potential for over $230 million in milestone payments.
While a law student, she worked part-time in the technology transfer office at the University of Washington, then gained experience in patent prosecution and litigation support at a Seattle intellectual property firm. Dr. Canady spent her first year after law school as a trainee with a European patent firm in Munich. After spending the next two and a half years with a mid-size intellectual property firm, she went on to found the biotechnology practice group at a small Los Angeles boutique firm, and in 2006, merged her practice with Origin Law to form Canady + Lortz LLP.
This broad-ranging intellectual property experience, coupled with her background in neurobiological research, provides a solid foundation for representing and advising clients in the pursuit and evaluation of patent rights, both domestically and abroad. Her experience in intellectual property law includes patent and trademark prosecution, client counseling and litigation support. She is frequently invited to speak at professional programs on various aspects of patent prosecution. Her prosecution practice has emphasized biotechnology, including diagnostic and therapeutic products and methods relating to recombinant DNA technology, vaccines, antibodies, stem cells, genomics and gene therapy.
An avid lover of bicycling, Dr. Canady frequently rides her bike in the hills and bike paths of the Los Angeles area and enjoys commuting around the city by bike. This commuting experience inspired her to develop a line of stylish apparel for women cyclists, Bikie Girl Bloomers. Coincidentally, she has expanded her patent expertise to include protection for fashion designs.
Education
- University of Washington School of Law, JD
- University of Washington, PhD in Behavioral Neuroscience
- Pacific University, BS (Cum Laude)
Admissions
- California Bar
- United States Patent & Trademark Office
Professional Associations & Activities
- American Intellectual Property Law Association; currently serving as Vice-Chair of AIPLA Fellows; past roles: Amicus Committee (2016-2019); Board of Directors (2013-2016); Vice-Chair, Mid-Winter Institute Planning Committee; Membership Committee; Rapid Response Team; Chair, Biotechnology Committee (2009-2011); Women in Intellectual Property Law Committee (Chair 2003-2005; Vice-Chair 2001-2003)
- Foundation for Advancement of Diversity in Intellectual Property Law, Trustee (2017-present)
- Intellectual Property Section Executive Committee, State Bar of California (2009-2012); Advisor (2012-2013)
- Los Angeles Intellectual Property Law Association; Member, Board of Directors (2001-2003)
- Center for Advanced Study and Research on Intellectual Property, University of Washington School of Law; Member, Advisory Board (2002-2014)
Selected Utility Patents
11,932,908: Compositions and methods for diagnosis and treatment of epilepsy
11,913,027: Methods of treatment using pluripotent human adipose adult stem cells
11,738,065: Polypeptides and analogues thereof for use in the treatment of diabetes and bone disorders
11,607,427: Method for chemoselection
11,576,982: Nipah virus envelope pseudotyped lentiviruses and methods of their use
11,512,351: Assay for pre-operative prediction of organ function recovery
11,385,232: Phenotypic Profiling Of Hepatocellular Carcinoma Circulating Tumor Cells For Treatment Selection
11,377,659: Short hairpin RNA (shRNA734) and use of same to positively select and eliminate genetically modified cells
11,331,377: Vectors and methods for regenerative therapy
11,160,853: Breast and ovarian cancer vaccines
10,858,711: Primers, probes and methods for sensitive, specific detection and monitoring of HIV-1 and HCV
10,639,448: Cognition and memory enhancement via multiple odorant stimulation
10,451,636: Protein biomarkers for immune assessment and prediction of transplant rejection
10,370,728: Antibiotic susceptibility testing using probes for preribosomal RNA
10,274,496: Biomarkers for detecting and monitoring colon cancer
10,212,978: Hitch for cycling skirt and method of using same
10,047,386: Biomarker for abdominal aortic aneurysm
9,878,006: Treatment of obesity and obesity related disorders by pharmacological targeting of Kv1.3 potassium channels
9,822,154: Immune modulator for immunotherapy and vaccine formulation
9,815,885: Inducible mutagenesis of target genes
9,772,334: Inflammatory bowel disease markers and therapies for colitis-associated intestinal fibrosis
9,719,127: Dual inducible vectors and cell lines
9,682,106: Method for combined conditioning and chemoselection in a single cycle
9,670,495: Pan-yeast autonomously replicating sequence
9,651,562: Cathelicidin as novel inflammatory bowel disease marker and therapy for colitis associated intestinal fibrosis
9,616,102: Analogs of ShK toxin and their uses in selective inhibition of Kv1.3 potassium channels
9,488,655: Biomarkers for detection of early- and late-stage endometrial cancer
9,439,932: Pluripotent Cells
9,328,144: HSV-1 Epitopes and Methods for Using Same
9,110,083: Biomarkers for early detection of ovarian cancer
9,056,892: Retrograde transport peptide and use of same for delivery to central nervous system
9,044,447: Antigenic peptide of HSV-2 and methods for using same
8,679,845: B cells modified to reversibly induce accelerated mutagenesis of target genes
8,460,870: Allosteric control of proteins by manipulating mechanical tension
8,232,314: Compounds that protect against sensory hair cell death
8,216,789: Diagnostic panel of cancer antibodies and methods for use
8,119,773: Compositions and methods for facilitating heme-iron export from cells
8,080,388: Stress protein compositions and methods for prevention and treatment of cancer and infectious disease
7,973,135: Compositions and methods for targeting cancer-specific transcription complexes
7,674,456: Breast Cancer Cell Lines and Uses Thereof
7,550,267: Microscale Diffusion Immunoassay Utilizing Multivalent Reactants
7,410,765: System For Protease Mediated Protein Expression
7,192,704: Methods For Detection and Treatment of Neural Cancers
7,179,903: Liver Specific Transcriptional Enhancer
7,138,384: Modulators of DNA Cytosine-5 Methyltransferase and Methods For Use Thereof
Selected Design Patents
D811,047: Bottom Garment With Craft Stitch
D773,780: Hitch for a skirt
D764,755: Pants with twisted outseam
D546,711: Combined Watch and Band
D540,629: Wine Bottle Cheeseboard
Speaking Engagements
“Responding to an Alleged Prima Facie Case of Obviousness By Attacking Its Premise” AIPLA Advanced Chemical/Pharma Patent Practice Institute: A Post Doc Bootcamp, New Orleans May 2022
“Patent Update” AIPLA MidWinter Institute, Rancho Mirage, California, February 2022
“The Biotech Two-Step: Applying the USPTO Section 101 Guidelines to Life Sciences Patent Claims” California Lawyers Association Webinar, April 2019
“Attention Biotechs! Purified and Isolated Products May Be Patented, Right?” American Intellectual Property Law Association (AIPLA) Annual Meeting, Washington, D.C., 2018
“Take a Walk on the Bio Side” (discussing patentable subject matter), American Intellectual Property Law Association (AIPLA) Spring Meeting, San Diego, 2017
“Responding to Office Actions Workshop”, Speaker, Patent Prosecution Boot Camp, American Intellectual Property Law Association (AIPLA), Washington, D.C., 2016, Denver, 2018, Online 2021
“Universities in the Patent System”, Moderator, 38th Annual Intellectual Property Institute, The State Bar of California, Berkeley, 2013
“Rapid Response & Biotech Public Education”, American Intellectual Property Law Association (AIPLA) Spring Meeting, Biotechnology Committee program, Austin, 2012
“Patent Wars: The Game Show”, Moderator (and game show host!), American Intellectual Property Law Association (AIPLA) Annual Meeting, Washington, D.C., 2011
“Practice Tips For Ensuring Proper Ownership of Inventions”, High Technology Protection Summit, Center for Advanced Study and Research on Intellectual Property (CASRIP), University of Washington, Seattle, 2011
“Biotechnology Patent Strategies in Challenging Markets”, Moderator, AIPLA Spring Meeting, San Francisco, 2011
“Flying Solo: Life as a Solo Practitioner”, Moderator, Los Angeles Intellectual Property Law Association (LAIPLA) Spring Seminar, San Diego, 2011
“Current Issues in Biotech Patent Prosecution,” Patent and Intellectual Property Law and Practice Summer Institute, University of Washington, Seattle, Annually 2002-2008
“New and Improved PCT Practice”, Moderator, AIPLA Spring Meeting, Boston, 2007
“Evolving Issues In the Written Description Requirement,” Preparing Patent Legal Opinions, Practising Law Institute, San Francisco, 2004, 2005
“Overcoming Utility Rejections,” AIPLA Annual Meeting, Washington, D.C., 2004
“Biotech Patent Prosecution After Festo,” Practising Law Institute, San Francisco, 2002
“Patenting Genes & Proteins In View of the USPTO’s Utility & Written Description Guidelines,” Patent and Intellectual Property Law and Practice Summer Institute, University of Washington, Seattle, 2001
“American Inventors Protection Act of 1999 – What Do You Need to Do Now?,” AIPLA Advanced Patent Practice Seminar, Washington, D.C., San Francisco, 2000
“What Chemical/Biotech Patent Attorneys Can Learn from Recent Mechanical/Electrical Case Law,” AIPLA Spring Meeting, Chicago, 1999
“Special Topics in Novelty and Nonobviousness in Biotechnology Patent Practice,” Patent and Intellectual Property Law and Practice Summer Institute, University of Washington, Seattle, 1998
“Inherency in Method Claims,” Center for Advanced Study and Research on Intellectual Property (CASRIP), University of Washington, Seattle, 1997
“Biotechnology Patent Prosecution in Europe and the U.S.: The Real-Life Difference Between Nonobviousness and Inventive Step,” CASRIP, University of Washington, Seattle, 1997
“Practical Patent Issues in Biotechnology,” University of Washington School of Law, Seattle, 1997
Legal Publications
“Myriad Questions Remain For Patenting DNA and Other Biological Molecules,” New Matter, Vol. 38 (No. 3), pgs. 18-21, 2013.
“Myriad after Mayo: Examining the Tea Leaves for Clues about DNA Patents,” New Matter, Vol. 37 (No. 4), pgs. 14-17, 2012. *See bottom of page to dowload a copy of this article.
“Patent and Licensing Issues in Transgenic Technology,” in Advanced Protocols for Animal Transgenesis, S. Pease and T. L. Saunders, eds., Springer, pgs. 1-23, 2011.
“The Importance of Getting Inventorship Right,” Nature Biotechnology, Vol. 24 (No. 2), pgs. 153-154, 2006.
“Evolving Issues In the Written Description Requirement,” in Preparing Patent Legal Opinions, Practising Law Institute, pgs. 163-211, 2004; pgs. 103-168, 2005.
“Biotech Patent Prosecution After Festo,” in Patent Practice in the Aftermath of Festo & Vornado, Practising Law Institute, pgs. 279-314, 2002.
“The Wright Enabling Disclosure for Biotechnology Patents,” Washington Law Review, 69(2): 455-479, 1994; also published at 4 Federal Circuit Bar Journal 243, 1994; winner of the Carkeek Prize and the Federal Circuit Bar Association George Hutchinson Writing Competition.
Scientific Publications
Canady KS, Olavarria JF, Rubel EW., Reduced retinal activity increases GFAP immunoreactivity in rat lateral geniculate nucleus. Brain Res. 1994 Nov 14;663(2):206-14.
Canady KS, Hyson RL, Rubel EW., The astrocytic response to afferent activity blockade in chick nucleus magnocellularis is independent of synaptic activation, age, and neuronal survival. J Neurosci. 1994 Oct;14(10):5973-85.
Garden GA, Canady KS, Lurie DI, Bothwell M, Rubel EW., A biphasic change in ribosomal conformation during transneuronal degeneration is altered by inhibition of mitochondrial, but not cytoplasmic protein synthesis. J Neurosci. 1994 Apr;14(4):1994-2008.
Canady KS, Rubel EW., Rapid and reversible astrocytic reaction to afferent activity blockade in chick cochlear nucleus. J Neurosci. 1992 Mar;12(3):1001-9.
Canady KS, Ali-Osman F, Rubel EW., Extracellular potassium influences DNA and protein syntheses and glial fibrillary acidic protein expression in cultured glial cells. Glia. 1990;3(5):368-74.