Suzannah K. Sundby is the Managing Partner of the Washington, DC office of Canady + Lortz LLP.
Suzannah practices all aspects of intellectual property law across a diverse array of technological fields including biochemistry, molecular biology, recombinant technologies, small molecules, pharmaceuticals, biologics, vaccines, microfluidics, diagnostics, medical devices and treatments, orphan drugs, catalyst compositions, and nanotechnology. Suzannah’s legal practice involves patent preparation and prosecution, licensing, opinion work, post-grant proceedings, strategic planning, and client counseling. She also assists start-up biotech companies with the preparation and prosecution of their foundation patents, non-disclosure agreements, and related IP issues.
Suzannah is excited and honored to be a 2019 recipient of an Alumni Distinguished Achievement Award from her alma mater—The University of Wisconsin, Eau Claire—where she received her degree in biochemistry and molecular biology.
Suzannah is among a select few experts listed in the Life Sciences Expert Guide, which are based on peer reviews and nominations, and independent research by the Legal Media Group (LMG). Additionally, she is ranked as an Intellectual Property Life Sciences Star in the LMG Life Sciences Guide, and on several occasions, has been recognized on the Patent Strategy & Management Attorney of the Year – District of Columbia shortlists. The LMG Life Sciences Guide is published by LMG and Euromoney and the listings are based on interviews and surveys by partners active in the market, interviews with clients and leading lawyers, and public information. She is also ranked as a Patent Star in the IP Stars handbook published by Managing Intellectual Property.
Suzannah was the Chair of the Biotechnology Committee of the American Intellectual Property Law Association (AIPLA) for the 2013-2015 term. Suzannah was also a member of AIPLA’s Task Force Committee on 101 Eligibility from 2014-2017. She was an Adjunct Professor at Franklin Pierce Law Center and taught “Advanced Biotech Patent Preparation and Prosecution”.
Before entering the legal field, Suzannah was a cytogeneticist and helped map the Drosophila genome as a member of the University of California’s Berkeley Drosophila Genome Group.
Education
- Franklin Pierce Law Center, JD
- Franklin Pierce Law Center, Masters in IP Law
- University of Wisconsin – Eau Claire, BS in Biochemistry/Molecular Biology
Admissions
- California Bar
- District of Columbia Bar
- United States Court of Appeals for the Federal Circuit
- United States District Courts of California
- United States Patent & Trademark Office
- Supreme Court of the United States
Professional Associations
- American Intellectual Property Law Association
- American Association for the Advancement of Science
- American Society of Gene & Cell Therapy (ASGCT)
Publications and Presentations
- Workshop Leader, “Responding to Office Actions – Biotech/Pharma/Chemical”, AIPLA Prosecution Boot Camp, Philadelphia, PA., May 13-15, 2019
- Panelist, “IP Expert Panel – Current IP issues”, The National Association of Patent Practitioners, Annual Meeting & Conference, United States Patent & Trademark Office, Alexandria, VA, July 18-21, 2019.
- Workshop Leader, “Responding to Office Actions – Biotech/Pharma/Chemical”, AIPLA Prosecution Boot Camp, United States Patent & Trademark Office, Rocky Mountain Region, Denver, CO, February 7-9, 2018. (Download)
- Faculty, “Sequence Listings Webinar”, sponsored by Oppedahl Patent Law Firm LLC, January 9, 2018. (Download)
- Speaker, “Examining Examiners: I Say Potato and You Say Vegetable – BRI and Unexpected Results of Interviews”, American Intellectual Property Law Association, 2017 Annual Meeting, Washington, DC, October 19, 2017. (Download)
- Speaker, “Lessons from Trailblazers”, Young Women in Bio (YWIB) Spring into STEM Event, Rockville, MD, April 28, 2017.
- Speaker, “101 Guidelines & Case Law in Biotech & Precision Medicine: How far have we come?”, AIPLA Webinar, American Intellectual Property Law Association, January 24, 2017. (Download)
- Workshop Leader, “Office Action Response Workshop, Biotech and Chemical”, AIPLA Prosecution Boot Camp, American Intellectual Property Law Association, Washington, DC, October 25-26, 2016. (Part I Download, Part II Download)
- Speaker, “Federal Circuit’s 101 Opinions First Half of 2016”, AIPLA Patent Agents Committee Luncheon, American Intellectual Property Law Association, July 21, 2016. (Download)
- Speaker, “Still 101 (IN)Eligibility, maybe more or maybe less”, 2016 Spring Meeting, American Intellectual Property Law Association, Minneapolis, MN, May 18-20, 2016. (Download)
- Speaker, “Protecting Medical Device Patents in Light of Increasingly Strict Subject Matter Patentability, Written Description, and Obviousness Standards”, 4th Advance Summit on Medical Device Patents, American Conference Institute, New York, NY, February 24-25, 2016. (Download)
- Speaker, “Biotech Patents and Functional Claiming”, CLE Webinar, American Intellectual Property Law Association, January 7, 2016. (Download)
- Speaker, “State of Affairs in 101 Patent Land”, AIPLA Corporate Practice Group Luncheon, American Intellectual Property Law Association, December 15, 2015. (Download)
- Speaker, “Differences between US and European Patent Laws that Could Cost You and Your Startup”, University of California’s Center for Accelerated Innovation (UC CAI), Webinar and on-site seminar, UCLA, Los Angeles, CA, October 26, 2015. (Download)
- Facilitator, “Facilitated Group Discussion: Defining Success for Yourself and Making the Most Out of Both Life and Career in the Increasingly Hectic Life Sciences Legal World”, Women Leaders in Life Sciences Law, American Conference Institute, Boston, MA, July 23-24, 2015.
- Speaker, “The Benefit of the Cost of Patents”, American Society of Gene & Cell Therapy, Annual Meeting, Clinical Trials and Regulatory Affairs Symposium, New Orleans, LA, May 13, 2015. (Download)
- Panelist, “101 (In)eligibility in the Life Sciences” American Intellectual Property Law Association, 2015 Spring Meeting, Los Angeles, April 30, 2015. (Download)
- Invited Public Speaker, “Eligibility of “Weighted” and “Combination” Diagnostic Assays”, Forum on the Interim Eligibility Guidance, United States Patent & Trademark Office, Alexandria, VA, January 21, 2015. (Download)
- Workshop Leader, “Working with SPEs: Best Practices Guide for Life Sciences Patent Practitioners”, Advanced Summit on Life Sciences Patents, American Conference Institute, New York, NY, January 13-14, 2015.
- Speaker, “Ten Most Common Mistakes Made by Faculty PIs with their IP”, University of California’s Center for Accelerated Innovation (UC CAI), Webinar and on-site seminar, UCLA, Los Angeles, CA, October 14, 2014. (Download)
- Panelist, “Patent Eligibility Panel on the Mayo/Myriad Guidance Relating to Biological Products and Treatments” USPTO’s Biotech/Chemical/Pharmaceutical Customer Partnership Meeting, United States Patent & Trademark Office, Alexandria, VA, September 17, 2014.
- Invited Speaker, “Patent Ineligibility – Alice Guidelines and Impact on Medical Device Inventions“, USPTO’s Medical Device Customer Partnership Meeting, United States Patent & Trademark Office, Alexandria, VA, September 16, 2014. (Download)
- Workshop Leader, “Combating Gender Stereotypes in the Life Sciences Legal Community: Open Forum and Working Group on Overcoming Implicit Bias”, Summit on Women Leaders in Life Sciences Law, American Conference Institute, Boston, MA, July 28-29, 2014.
- Invited Public Speaker, “Subject Matter Eligibility Forum on the Mayo/Myriad Guidance” United States Patent & Trademark Office, Alexandria, VA, May 9, 2014.
- Panelist, ” The Incredible Shrinking Patent World: Protecting Medical Device Patents in Light of Increasingly Strict § 101 Patentability Standards”, Medical Device Patents Conference, American Conference Institute, Chicago, IL, March 24-26, 2014.
- Panelist, ” Through the AIA Prior Art Looking Glass—Understanding the Global Wonderland of Prior Art, and Utilizing Preissuance Submissions, Supplemental Examination, Ex parte Reexamination, and Reissue”, 2nd Comprehensive Guide to Patent Reform, American Conference Institute, New York, NY, January 23-24, 2014.
- Speaker, “What IP issues are relevant for successfully commercializing gene and cell therapies?”, American Society of Gene & Cell Therapy, 16th Annual Meeting, Salt Lake City, Utah, May 15-19, 2013.
- Panelist, “An Evolving Patent Claim Quagmire of Eligibility and Infringe-ability – Recent Developments in Patent Claim Eligibility and Joint Infringement”, 2013 Spring Meeting, American Intellectual Property Law Association (AIPLA), Seattle, WA, May 1-3, 2013.
- Panelist, “Protecting Method and Diagnostic Claims: Tailoring Medical Device Patents to Comply with Increasingly Strict § 101 Patentability Standards”, Medical Device Patents Conference, American Conference Institute, Chicago, IL, March 5-6, 2013.
- Panelist, “Gambit: Utilizing Third Party Prior Art Submissions in the Pre-Issuance Chess Match”, 2nd Comprehensive Guide to Patent Reform, American Conference Institute, New York, NY, January 23-24, 2013.
- “No One is Patenting Your Genes: The Ripple Effect if Isolated DNA Claims Are Made Patent Ineligible”, IPWatchdog.com, December 14, 2012.
- Panelist, “Scrutinizing the CAFC’s Decisions in Akamai and McKesson and Protecting Technology in Their Wake”, 14th Advanced Forum on Biotech Patents, American Conference Institute, Boston, MA, November 28-29, 2012.
- Speaker, “Patent Reform: What UCLA Inventors Need to Know Before Filing”, AIA Seminar, Los Angeles, CA, November 5, 2012.
- Speaker, “Case Law Update: Predicting the Patentability of Diagnostic Patents Post-Mayo v. Prometheus”, 6th Tactical and Practical Guide to Freedom to Operate, American Conference Institute, Philadelphia, PA, July 2012.
- Workshop Leader, “Mastering the Intricacies of USPTO Practice Post-Patent Reform: Supervisory Patent Examiners Weigh In”, Advanced Summit on Medical Device Patents, American Conference Institute, Boston, MA, February 2012.
- “The Impact of Recent Patent Law Cases and Developments”, Inside the Minds, 2012 Edition.
- Invited Panelist, “U.S. Patent & Trademark Office’s first publicly open Medical Device Technology Customer Partnership Meeting”, United States Patent & Trademark Office, Alexandria, VA, November 29, 2011.
- Speaker, “How to Get Your Slice of the Functional Food Pie: Patenting Functional Foods and Other Nutraceuticals in the United States,” BIO KOREA 2011 Conference, Seoul, Korea, September 2011.
- Invited Speaker, “Compacting Prosecution by Interviews: A View From Outside the USPTO,” Presentation to Examiner Corps of U.S. Patent & Trademark Office by invitation of David Kappos, the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent & Trademark Office, Alexandria, VA, February 2011.
- Workshop Leader, “Drafting and Prosecuting Successful Patent Applications in the U.S. and Abroad in an Evolving Biotech Patent Landscape,” 12th Advanced Forum on Biotech Patents, American Conference Institute, Boston, MA, December 2010.
- Speaker, “Patenting Biotech Sequences: What’s Happened and What To Do Now”, Webinar for the Maryland State Bar Association, November 18, 2009.
- “Do You Really Want to (Attempt to) Patent That”, 9th Advanced Forum on Biotech Patents: Analysis, Insights, and Strategies for New Challenges in Biotech Patent Practice, American Conference Institute, September 2007.
- Speaker, “Protecting Proprietary Information – Deciding Whether to File for a Patent”, 9th Advanced Forum on Biotech Patents: Analysis, Insights and Strategies for New Challenges in Biotech Patent Practice, American Conference Institute, Boston, MA, September 2007.
- Speaker, “Biotech and Nanotech Patent Application and Prosecution Strategies”, Government Intellectual Property Law Association (GIPLA), Washington, DC, January 2007.
- Team Member, “Patent Landscape of H5N1 Influenza Virus”, Report prepared for the World Health Organization, 2007.
- Speaker, “How to Lose Your Patent Rights”, Frederick Innovative Technology Center, Inc. (FITCI), Frederick, MD, October 2006.
- Speaker, “How to Work with Difficult … To Turn an Idea into a Patentable Invention”, American Chemical Society Annual Meeting, Atlanta, GA, March 2006.
- “Technology Licensing – From First Steps to Executing a Plan”, Internat’l BioPharm, Volume 17(5), May 2005.
- Speaker, “Biotech Patents” Indo-US Symposium on Infectious Disease Research and Development, Bangalore, India, 2004.
- “IP Law Considerations: Aspects for Small and Medium Enterprises” Asia Pacific Tech Monitor, July-August 2004.
Representative Patents and Applications
US 10,196,458 Anti-Immunoglobulin E Antibodies and Methods of Using Thereof
US 10,191,067 Method for Identifying an Agent for Treating Abnormal Kidney Function
US 10,166,277 Vault Immunotherapy
US 10,086,061 Combination Purified Inactivated Vaccine for Flaviviruses
US 10,060,887 Field Sampling Kit and Methods for Collecting and Detecting Alkyl Methylphosphonic Acids
US 10,039,620 Ceramic Body, in Particular for Use As a Dental Implant
US 9,989,537 Methods and Tools for Vel Blood Group Typing
US 9,951,118 Engineering Antiviral T Cell Immunity through Stem Cells and Chimeric Antigen Receptors
US 9,926,604 Multiplex PCR-based Testing of Cutaneous Squamous Cell Carcinoma and Pseudoepitheliomatous Hyperplasia and Methods for Distinguishing the Same
US 9,896,481 Modified Mini-Hepcidin Peptides and Methods of Using Thereof
US 9,700,562 Triazine Compounds and Compositions Thereof and Methods for Treating Malaria and Chemoprophylaxis
US 9,597,372 Vault Complexes for Cytokine Delivery
US 9,574,190 Screening Method for Peptide Binding to Target Molecule in pH-Dependent Manner
US 9,555,090 Equine Encephalitis Virus Vaccines and Methods of Using Thereof
US 9,463,232 Vault Compositions for Immunization
US 9,354,233 A+ Biomarker Assays
US 9,353,366 Novel Asparaginase and Treating Diseases Associated With Asparagine Dependence
US 9,334,246 Substituted Triazines for Malaria Treatment and Chemoprophylaxis
US 9,320,789 Combinations of Gene Deletions for Live Attenuated Shigella Vaccine Strains
US 9,308,061 Dental Implant
US 9,238,041 Methods and Compositions for Regulating RNA Import into Mitochondria
US 9,238,041 Methods and compositions for regulating RNA import into mitochondria
US 9,228,007 Recombinant human progenitor cells, engineered human thymocytes, and engineered human T cells
US 9,226,676 Methods, systems and devices for detecting and diagnosing diabetic diseases and disorders
US 9,216,305 Core-shell-type cerium oxide microparticle, dispersion solution comprising the microparticle, and process for production of the microparticle or dispersion solution
US 9,133,253 Ricin vaccine and methods of making thereof
US 9,132,138 Method for the treatment of multiple sclerosis
US 9,051,561 Novel asparaginase and treating diseases associated with asparagine dependence
US 9,050,298 Method of treating ischemia/reperfusion injuries to a heart with netrin-1
US 8,986,708 Combinations of gene deletions for live attenuated Shigella vaccine strains
US 8,815,177 Methods and devices for immobilization of single particles in a virtual channel in a hydrodynamic trap
US 8,734,799 Unconjugated anti-TfR antibodies and compositions thereof for the treatment of cancer
US 8,691,859 Broad spectrum antibacterial compounds
US 8,647,633 Recombinant F1-V plague vaccine
US 8,642,746 Unique calibrator polynucleotides and methods of using in quantitative nucleic acid assays
US 8,626,274 Methods, systems and devices for detecting and diagnosing heart diseases and disorders
US 8,617,557 Antibody fusion with IL-12 proteins with disrupted heparin-binding activity
US 8,575,319 Cleavable vaccine compositions and uses thereof and methods of making and using the same
US 8,435,941 Mini-hepcidin peptides and methods of using thereof
US 8,222,293 Treating learning deficits with inhibitors of HMG CoA reductase
US 7,999,001 Antiviral compounds and methods of using thereof
US 7,825,154 Small molecule inhibitors of botulinum neurotoxins
US 7,781,183 Small molecules and a pharmacophore model of inhibition of anthrax lethal factor
US 7,754,461 Large-scale production of human serum butyrylcholinesterase as a bioscavenger
US 7,745,407 Competitive regulation of hepcidin mRNA by soluble and cell-associated hemojuvelin and methods of making and using thereof
US 7,678,256 Insulator-based DEP with impedance measurements for analyte detection
US 7,611,834 Methods and devices for protein assays
US 7,574,340 Small molecules and a pharmacophore model for inhibition of botulinum toxin
US 7,498,331 Arthropod repellent pharmacophore models, compounds identified as fitting the pharmacophore models, and methods of making and using thereof
US 7,452,721 A novel and practical serological assay for the clinical diagnosis of leishmaniasis
US 7,420,032 Dominant B cell epitopes and methods of making and using thereof
US 7,297,785 Unique chromosomal sequence of Bacillus anthracis and methods of making and using thereof including real-time PCR assays
US 7,288,404 Microcantilevers for biological and chemical assays and method of making and using thereof
US 7,259,236 RBP1L1, A novel retinoblastoma binding protein-related gene encoding an antigenic epitope and methods of using thereof
US 7,259,167 Antimalarial and antiproliferative pharmacophore models, novel tryptanthrin compounds having increased solubility, and methods of making and using thereof
US 7,253,008 Reactive ion etched substrates and methods of making and using
US 7,132,787 Multilayer polymer-quantum dot light emitting diodes and methods of making and using thereof
US 7,101,902 2-Guanidinylimidazolidinedione compounds and methods of making and using thereof
US 7,005,267 Internal positive control for probe-based nucleic acid molecule assays and methods of making and using thereof
US 6,953,786 Compositions comprising plant-derived polyphenolic compounds and inhibitors of reactive oxygen species and methods of using thereof
US 6,906,098 Mixed steroidal 1,2,4,5-tetraoxane compounds and methods of making and using thereof
US 6,869,787 Ricin vaccine and methods of making and using thereof
US 6,825,382 Trifluoromethylepinephrine compounds and methods of making and using thereof
US 6,800,618 Chemosensitizing agents against chloroquine resistant plasmodium falciparum and methods of making and using thereof
US 6,787,571 Anti-inflammatory compounds derived from Pseudopterorgorgia elisabethae
US 6,746,850 Assay for detecting, measuring and monitoring the activities and concentrations of proteins and methods of use thereof
US 6,706,754 Reversed amidines and methods of using for treating, preventing, or inhibiting leishmaniasis
US 6,642,037 Preparation of enzymatically active sponges or foams for detoxification of hazardous compounds
WO2019038655 Compositions and Methods for Treating Neurodegenerative Diseases
WO2018226441 Immunoassay for Human Erythroferrone
WO2018208606 Protective Chimeric Antigen Receptor Stem Cell Gene Therapy for Viral Infection
WO2018191645 Methods and Devices for Performing Auto-Antibody Assays
WO2018128779 Methods for Generating Skeletal Muscle Progenitor Cells
WO2018064468 Alpha-Ketobutyrate, 2-Hydroxybutyrate, and Alpha-Ketoglutarate for Stimulating Hair Growth
WO2018045029 Pan South American Arenavirus Live Attenuated Vaccine
WO2018005324 Artificial Invaplex Formulated with Deacylated Lipopolysaccharide
WO2017210272 Skeletal Removal of Bisphosphonates
WO2017192459 HIV Peptide Vaults and Methods of Making and Using Thereof
WO2017192413 Glutarate Compounds for Treating Ischemia-Reperfusion Injuries
WO2017132535 Methods for Selectively Expanding and Enriching Cells Transduced with Chimeric Antigen Receptors and Treating HIV Infection
WO2017040491 Methods for Molecularly Characterizing Cervical Cell Samples
WO2016164687 Methods of Diagnosing Post-Operative Complications Using Serum Nitric Oxide Levels
WO2016109363 S-Alkylated Hepcidin Peptides and Methods of Making and Using Thereof
WO2016049122 Cell-Free Methods of Producing Vault Particles and Vault Particles Resulting Therefrom
WO2014100216 Cancer-associated microRNAs and related antibodies
WO2014071015 Erythroferrone and ERFE polypeptides and methods of regulating iron metabolism
WO2014007853 Dihydromyricetin for the treatment of diseases and disorders of the glutamatergic system
WO2013158782 Methods and compositions for treating cardiac arrhythmias
WO2013142097 Methods, systems and devices for detecting and diagnosing diabetic diseases and disorders
WO2013119518 Small molecules for islet expansion
WO2013134146 Methods and compositions for treating viral infections by blocking type I interferon activity
WO2011008541 Molecular markers and assay methods for characterizing cells