Suzannah K. Sundby is the Managing Partner of the Washington, DC office of Canady + Lortz LLP.

Suzannah Sundby

Suzannah practices all aspects of intellectual property law across diverse technologies including biochemistry, molecular biology, pharmaceuticals, microfluidics, diagnostics, medical devices, and nanotechnology. Her legal practice involves patent preparation and prosecution, licensing, opinion work, post-grant proceedings, strategic planning, and client counseling. Ms. Sundby has experience assisting start-up biotech companies with the preparation and prosecution of their foundation patents, nondisclosure agreements, and related IP issues.

For 2016 and 2017, Suzannah was listed on the Patent Strategy & Management Attorney of the Year – District of Columbia shortlist, along with other top-ranking attorneys in the Life Sciences, by the Legal Media Group (LMG). She was named an Intellectual Property Life Sciences Star in the 2015, 2016, and 2017 LMG Life Sciences Guides (published by LMG and Euromoney), which are based on nearly 1,000 interviews and surveys completed by partners active in the market, interviews with clients and leading lawyers, and public information.

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

  • 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 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
WO2015017755 Engineering antiviral T cell immunity through stem cells and chimeric antigen receptors
WO2014159993 Substituted triazines for malaria treatment and chemoprophylaxis
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
WO2013151567 Equine encephalitis virus vaccines and methods of using thereof
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