Skip to content
IP + Technology Law
Brenden S. Gingrich - Partner -San Diego

Brenden S. Gingrich, Ph.D.

Partner
San Diego
[email protected]
858-707-4000
vcard iconDownload vCard

Overview

Brenden Gingrich’s practice focuses on the protection of intellectual property, primarily for the biotechnology and pharmaceutical industries. With more than 20 years of experience, Brenden provides strategic advice to clients of all sizes regarding the development of intellectual property portfolios in a variety of technology areas including therapeutic and diagnostic antibodies, antisense therapy, molecular diagnostics, peptide therapeutics, gene therapy, stem cells, and human organoids.

Brenden develops and manages patent portfolios of every size, from a few patents for solo inventors and start-ups, to large international patent portfolios for multinational companies. He also has experience in appeal and post-grant proceedings in the U.S. and foreign jurisdictions, including drafting and arguing pre-grant appeals before U.S. Patent Trial and Appeal Board (PTAB), and instituting and defending against post-grant patent proceedings in the U.S. and Europe (Post-Grant Review (PGR), Inter Partes Review (IPR), Oppositions and Appeals before the European Patent Office). Brenden’s practice also includes counseling regarding the preparation of Patent Term Extension requests and the filing of Orange Book listings.

Brenden assists clients in conducting patentability, landscape, and pre-launch third party risk analyses, and prepares any needed legal opinions regarding non-infringement and invalidity of third party patents. He performs intellectual property due diligence, representing both investors and target companies, drafts intellectual property portions of quarterly/annual SEC filings, and drafts and evaluates complex intellectual property license agreements.

During his doctoral studies, Brenden studied the molecular basis of complex social behavior in rodents. Prior to receiving his Ph.D., his undergraduate thesis focused on the study of artificial protein channels created using molecular biological techniques.

Clerk Experience

  • Law clerk to the Honorable Patrick E. Higginbotham, Circuit Judge of the U.S. Court of Appeals for the Fifth Circuit, 2002-2003

Education

  • University of Virginia School of Law (J.D., 2002), Editorial Board of Virginia Law Review, Order of the Coif
  • Emory University (Ph.D. Neuroscience, 1999)
  • University of Delaware (B.S. Chemistry, 1993), cum laude

Bar Admissions

  • State Bar of California
  • U.S. Patent and Trademark Office

Recognition

Awards & Honors

  • In 2014, Brenden was recognized for his legal work in Biotech Patents in the Corporate INTL Global Awards.

News & Insights

Articles

Speeches & Seminars

  • “Policy Outlook- Valuation Model Implications of 21st Century Cures, IP, Reform, TPP, and PDUFA VI,” BIO Investor Forum, San Francisco, CA (October 20, 2015).

  • “Next-Generation Sequencing (NGS) Assays and Technologies,” Licensing Executives Society (USA & Canada), San Diego, CA (April 30, 2015).

  • “Intellectual Property and Licensing Workshop,” San Diego Center For Systems Biology, La Jolla, CA (April, 24, 2015).

  • “Protecting Ideas that Generate Income,” IMMUNOLOGY 2013, Hawaii, HI (May 5, 2013).

  • “Biologics Development,” Sino-American Biomedical & Pharmaceutical Professionals Association (SABPA) Science & Technology Forum XI, La Jolla, CA (March 23, 2013).

  • “Monetizing Your Intellectual Property: Protecting Ideas that Generate Income,” IMMUNOLOGY 2012, Boston, MA (May 5, 2012).

Latest Updates and News

Blog - Biotechnology
Jul 2023
Reseller or Distributor Beware? Downstream Liability for Infringing a Patented Process
As retailers or distributors that are not manufacturers of a product, companies may believe they cannot infringe a patent claiming how the product is made. After all, the retailers or distributors are not performing any steps of the patented manufacturing process. The companies may have no say in, or even be aware of how the product is manufactured. The companies may conclude they are insulated from liability based simply on being downstream from the manufacturing process.
News
Dec 2022
BioWorld MedTech Quotes Brenden Gingrich
Knobbe Martens partner Brenden Gingrich, Ph.D., was quoted by BioWorld Medtech in the article “Former PTO commissioners come out in support of latest US Senate push for patent reform.” The article discusses...
Blog - Biotechnology
May 2019
Cleveland Clinic II: Has the Federal Circuit Undermined Patent Office Guidance and Eliminated an Important Tool for Patenting Diagnostics?
On April 1, 2019, the Federal Circuit issued a non-precedential decision in Cleveland Clinic Foundation, Cleveland HeartLab, Inc. v. True Health Diagnostics LLC (“Cleveland Clinic II”), affirming the district court’s holding that claim 1 of U.S. Patent No. 9,575,065 (the “ ’065 patent”) and claims 1 and 2 of U.S. Patent No. 9,581,597 (the “’597 patent”) were invalid under 35 U.S.C. § 101 as being directed to a patent-ineligible law of nature.  In its decision, the Federal Circuit held that the courts are not bound by United States Patent and Trademark Office (USPTO) guidance, and concluded that a portion of the USPTO’s guidance on subject matter eligibility was inconsistent with controlling judicial precedent.  
Blog - Biotechnology
Mar 2019
Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC: Claims Reciting Conventional Method Steps found Patent Ineligible
On February 6, 2019, the Federal Circuit decided Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, affirming a District Court for the District of Massachusetts decision that the claims at issue were patent ineligible for being directed to a natural law.  
Blog - Biotechnology
Sep 2018
UC v. Broad Institute: No Interference-In-Fact in CRISPR Genome Editing Applications
On September 10, 2018, the Federal Circuit decided Regents of the University of California v. Broad Institute, Inc., affirming the Patent Trial and Appeal Board (PTAB)’s determination of no interference-in-fact between the University of California (UC)’s application and the claims of twelve patents and one application owned by the Broad Institute.  
Blog - Biotechnology
Jul 2018
The FDA Approves Active Ingredient Derived from Marijuana to Treat Epilepsy
On June 25th, 2018, the U.S. Food and Drug Administration (FDA) approved the drug, Epidiolex, for the treatment of seizures associated with two rare forms of epilepsy, Dravet syndrome, and Lennox-Gastaut syndrome.  The active ingredient in Epidiolex, cannabidiol (CBD), is a chemical compound found in marijuana, but is not associated with the euphoria caused by tetrahydrocannabinol (THC).  Epidiolex is the first FDA-approved drug that contains a purified drug substance derived from marijuana.