Roger Kuan

Practices

Industries

Education and Clerkships

J.D., Santa Clara University School of Law, 2004

M.S., Environmental Engineering (biochemical engineering emphasis), California State Polytechnic University, 1999, with honors

B.S., Toxicology, University of California, Davis, 1995

Admissions

California

U.S. Patent and Trademark Office

Court Admissions

U.S. Court of Appeals for the Ninth Circuit

U.S. District Court for the Northern District of California

Languages

Chinese (Cantonese)

Chinese (Mandarin)

Profile

Roger Kuan is a Partner at Haynes and Boone and chair of the Precision Medicine and Digital Health Practice Group, where he counsels companies that are uniquely positioned in the convergence of the life/medical sciences and technology industries on how to successfully navigate the complexities of the intellectual property (IP), data rights and regulatory challenges they encounter.

Roger has extensive experience in IP strategy and portfolio management (utility/design patents, trademarks, copyrights, and trade dress), data rights strategy, licensing and technology transactions, freedom-to-operate clearances, enforcement, monetization, IP due diligence, and dispute resolution. His practice is focused in the life sciences sector (e.g., research tools, analytical instrumentation/software, digital therapeutics, medical devices, diagnostics, biomanufacturing equipment, etc.) with an emphasis in emerging technologies such as Precision Medicine (e.g., genomic sequencing platforms, AI/ML, computational genomics/bioinformatics, molecular diagnostics, companion diagnostics, etc.), Digital Health (e.g., mobile apps, clinical decision support, software, digital therapeutics, AI/ML Imaging Diagnostics, wearables, etc.) and 3D printing/bioprinting.

Prior to joining Haynes, Roger served as Director IP Counsel at a multinational biotechnology company, where he managed a team to support the worldwide IP needs of the company’s life sciences tools, bioproduction/biomanufacturing, molecular diagnostics, and nucleic acid sequencing system/software platforms. Prior to finishing his law degree, he worked in the life sciences industry for several Fortune 500 pharmaceutical, medical device, and chemical companies. He has held professional positions in the R&D, sales, engineering, and regulatory affairs organizations.

Professional Recognition

  • The Legal 500 U.S., Legalease Ltd., 2019

Selected Publications and Speeches

  • “Negotiating Term Sheets,” Redefining Early Stage Investments (RESI) Conference, January 2020 (San Francisco).
  • “Everything You Need to Know About Digital Health,” Cedars-Sinai Accelerator, November 2019.
  • “Adopting AI in Health Care Will be Slow and Difficult,” Harvard Business Review (published on HBR.ORG), October 18, 2019.
  • “Patent Protection for Medical 3D Printing & Bioprinting Technologies,” 3DHeals (published on 3DHeals.com), September 2019.
  • “Negotiating Term Sheets,” Redefining Early Stage Investments (RESI) Conference, June 2019 (Philadelphia).
  • “IP Protection Strategies for Personalized/Precision Medicine,” BIOCOM, November 2018 (San Francisco).
  • “Advanced Patent Prosecution Workshop 2018: Advanced Claim Drafting Issues (Personalized/Precision Medicine),” Practicing Law Institute (PLI), September 2018 (San Francisco).
  • “Operation Valuation: Maximizing the Value of your Asset Portfolio,” Redefining Early Stage Investments (RESI) Conference, June 2018 (Boston).

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