Karen S. Canady, Ph.D. is a founding partner of Canady + Lortz LLP.

Karen Canady

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 has been invited to speak at professional programs, particularly on the topics of drafting patent validity and infringement opinions and biotechnology 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; as well as microfluidics and Raman spectroscopy.

An avid lover of bicycling, Dr. Canady frequently rides her road bike in the hills and bike paths of the Los Angeles area and enjoys commuting around the city on her Dutch bike. This commuting experience inspired her to develop a line of cute and stylish apparel for women cyclists, Bikie Girl Bloomers. She has also 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

  • American Intellectual Property Law Association; Board of Directors (beginning Fall 2013); past roles: Vice-Chair, Mid-Winter Institute Planning Committee; Membership Committee; Rapid Response Team; Chair, Biotechnology Committee (2009-2011); Women in Intellectual Property Law Committee (Vice-Chair 2001-2003; Chair 2003-2005)
  • 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
  • Intellectual Property Law Professional Delegation to Vietnam and Cambodia, People To People Citizen Ambassador Programs; Delegate (April 2008)

Selected Utility Patents

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

9,487,575: Compositions and methods for treatment of gynecologic cancers

9,486,539: Nipah virus envelope pseudotyped lentiviruses and methods of their use

9,439,932: Pluipotent Cells

9,439,928: Method for combined conditioning and chemoselection in a single cycle

9,328,144: HSV-1 Epitopes and Methods for Using Same

9,315,867: Compositions and methods for detecting cancer

9,273,119: Inducible mutagenesis of target genes

9,241,976: Use of HDL-related molecules to treat and prevent proinflammatory conditions

9,220,697: Compositions and methods for diagnosis and treatment of epilepsy

9,149,082: Hitch for cycling skirt and method of using same

9,138,743: Method and device for rapid parallel microfluidic molecular affinity assays

9,138,473: Rapid, efficient purification of HSV-specific T-lymphocytes and HSV antigens identified via same

9,110,083: Biomarkers for early detection of ovarian cancer

9,060,961: Molecules and methods for treatment and detection of 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

8,951,740: Genotoxicity as a biomarker for inflammation

8,852,602: Immunological herpes simplex virus antigens and methods for use thereof

8,679,845: B cells modified to reversibly induce accelerated mutagenesis of target genes

8,664,359: Cancer related isoforms of components of transcription factor complexes as biomarkers and drug targets

8,538,499: Process and apparatus for non-invasive, continuous in vivo measurement of hematocrit

8,536,139: Compositions comprising lipoteichoic acid for use in treating pleural effusion or pneumothorax

8,460,870: Allosteric control of proteins by manipulating mechanical tension

8,460,674: HSV-1 epitopes and methods for using same

8,445,200: Genotoxicity as a biomarker for inflammation

8,323,915: Biomarkers for early detection of ovarian cancer

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

8,008,053: Allosteric control of proteins by manipulating mechanical tension

7,973,135: Compositions and methods for targeting cancer-specific transcription complexes

7,851,144: Compositions and methods for detecting cancer

7,763,426: Probes and methods for detection of Escheridia coli and antibiotic resistance

7,736,891: Microfluidic assay system with dispersion monitoring

7,674,456: Breast Cancer Cell Lines and Uses Thereof

7,670,792: Biomarkers for Early Detection of Ovarian Cancer

7,664,605: Absolute Calibration Process and Device for a Tissue Modulated Raman Spectrometer

7,632,681: Compositions and Methods for Propagation of Neural Progenitor Cells

7,550,267: Microscale Diffusion Immunoassay Utilizing Multivalent Reactants

7,410,765: System For Protease Mediated Protein Expression

7,364,886: Chemical Sensor Enhanced by Direct Coupling of Redox Enzyme to Conductive Surface

7,286,871: Method and Apparatus for Reducing Contamination of an Electrical Signal

7,204,982: Compositions and Methods For Treatment and Detection of Multiple Cancers

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

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

“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

“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.