On Your Team
Intellectual Property

Nisan Steinberg, Ph.D., Esq.

Our Mission: Achieve Your Mission.

You need informed counsel to enable timely IP decisions.

Develop IP Assets and Strategy

Creative Approach to

Technical IP Work-arounds

Provide Support to

Enable Successful Transactions

Listen well. Be Clear. Get It Done.

Patent Prep & Prosecution Biologic Therapeutics
Licensing & Collaborations Drug Carriers and Delivery
IP Due Diligence Manufacturing and research methods
Freedom-to-Operate Recombinant Expression
Patentability & Validity Transgenic animals and plants
Trademark Registration Gene therapy
Nisan Steinberg, Esq., Ph.D

Nisan Steinberg, Ph.D., Esq.

Valuable Experience

I have over 20 years of experience counseling start-up, large pharma, and academic clients and their research and development teams about their inventions, patentability, freedom-to-operate, patent validity, patent drafting and prosecution and post-grant opposition strategies, patent portfolio management, technology licensing and transfer, collaborations, trademark registration, copyright compliance, and other IP-related transactions. I also counsel my clients about best practices for their own internal intellectual property management and avoidance of legal pitfalls, e.g., with respect to the exportation of controlled information.

Before starting my private practice in 2015, I was Senior Counsel at Amgen Inc. for over 10 years as lead IP attorney for several product strategy teams and biosimilar product teams in the neuroscience, inflammation, cardiovascular, oncology, and metabolic therapeutic areas. I was law team leader for Manufacturing, Operations & Devices and maintained the Amgen global copyright compliance desk.

I received early training in the practice of IP Law as an associate in the law firms of Sidley Austin LLP and Pretty, Schroeder & Poplawski, and at Rae-Venter Law Group.

My experience has made me sensitive to my clients’ need to maximize value and minimize legal fees and costs. I offer flat fee and capped fee arrangements on a per project basis in most matters. I contract with a team of experienced paralegals, expert in U.S. and international patent practice, who assist on an as-needed basis. Clients have ready access to my electronic docketing to remain well informed.

Professional liability insurance carrier: CNA

EDUCATION
J.D , University of Southern California Gould School of Law 1998
Ph.D., Microbiology, University of California, Davis 1990
B.S., Microbiology, magna cum laude San Diego State University 1982

BAR ADMISSIONS
California 1998
U.S. Patent & Trademark Office 1996

PRESENTATIONS & PUBLICATIONS
Presented: Copyright Obligations and Fair Use in Scientific Reporting & Publication, University of Southern California, BISC 587 Fall 2016
Presented: Patents 101; Copyrights and Fair Use, Amgen Research Teams 2010-2013
Presented: Examiner Interviews, 2002 Patent Prosecution Workshop, PLI, San Francisco
Regulation of Scientific Misconduct in Federally Funded Research, 10 So. Cal. Interdisc. L. J. 465 (2001).
12 scientific articles (list available on request)

Client References Available on Request

Sample Published Applications

Contact

E-mail: nisan@nisansteinberg.com

Tel. (310) 866-7817

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