Overview
Antoinette F. Konski is a partner and intellectual property lawyer with Foley & Lardner LLP, and serves as managing partner of the Silicon Valley office. She also served as a co-chair of the firm’s national Life Sciences Industry Team and is the former vice-chair of the firm’s national Chemical, Biotechnology & Pharmaceutical Practice Group.
Representative Experience
Antoinette’s practice focuses on advising clients about the creation, protection, acquisition, and maximization of intellectual property assets in a manner that optimally aligns with their business objectives. She primarily counsels biotechnology, pharmaceutical, and medical device companies on all aspects of obtaining, defending, evaluating, licensing, and enforcing intellectual property rights and patents. Antoinette counsels clients on how to best utilize their intellectual property assets as a powerful tool in effectuating their business strategy, whether that involves gaining a competitive market advantage, establishing or consolidating their market position, or obtaining the maximum value for or commercializing their intellectual property assets.
She manages complex global patent portfolios (having drafted over 600 original patent applications) in diverse technologies, including personalized CAR and NK cell therapy, gene therapy, antibody therapeutics, pharmaceuticals, diagnostics, formulation technology, and medical devices. Antoinette also has specialized expertise in precision/personalized medicine. She has extensive experience in freedom-to-operate and landscape analysis of antibody technologies and cell and gene therapies, which allows her to assist clients in developing innovative, novel, and competitive technologies in these fields.
Antoinette also has significant experience in assisting clients prepare for the diligence of intellectual property assets within the context of various business transactions, including public or private investments, strategic acquisitions, and public offerings.
Antoinette has also successfully represented clients in multiple inventorship disputes, derivation and reexamination proceedings before the United States Patent Office, as well as successfully argued several cases before the United States Patent Trial and Appeal Board.
Representative Recent Transactions
- Represented a pharmaceutical company recently acquired for $1 billion
- Represented a medical device company that went public with a valuation of over $2 billion
- Represented a cell therapy company in connection with equity investment of $36 million
- Represented a gene therapy company in several rounds of capital raising
- Represented a stem cell company in several rounds of capital raising
- Represented a biotechnology company in connection with acquisition of pharmaceutical company
- Represented CHL Medical Partners in connection with equity investment
- Represented HealthCare Ventures in connection with Series A equity investment
Recognition
In 2013, Ms. Konski was named one of Silicon Valley’s Women of Influence by the Silicon Valley Business Journal. In 2011, she was selected by the Daily Journal as a Top 25 IP Portfolio Manager in California and one of 25 Leading Biotech Lawyers in California. She was recognized by The Legal 500 for her work in the area of health care – life sciences in 2013, 2014, 2015, and 2016 and was also recognized in The Legal 500 US 2009 Edition and in The Legal 500 US: Volume II: Intellectual Property, Media, Technology, and Telecom 2007 Guide as a top attorney for patent prosecution.
Thought Leadership
Antoinette is the editor of the firm’s Personalized Medicine Bulletin blog, which follows the evolving development and intellectual property protection of enabling diagnostic methods and therapies. She is a founding member of The Business of Personalized Medicine Conference and serves on the Advisory Board. She is a frequent speaker and author on various patent topics.
Representative Publications and Presentations
Book Chapters
Antoinette has authored several book chapters: Patenting Trends in Chimeric Antigen Receptor Technologies, in Second Generation Cell and Gene-based Therapies (Academic Press, 2020); Inventorship and Authorship, in Intellectual Property in Molecular Medicine (Cold Spring Harbor Laboratory Press, 2014); Derivation and Derivation Proceedings, in America Invents Act: Law & Analysis (Wolters Kluwer Law & Business, 2013); Patenting Stem Cell Technologies: Making a Claim in Colloquium Series on Stem Cell Biology (Morgan & Claypool Publishers, 2013).
Select Publications & Presentations
- Konski and Lorengo, “Patents and the Pandemic – Patenting Trends Before and After Covid,” 16th Annual Advanced Patent Law Institute, March 23-25, 2021, The University of Texas School of Law and George Mason University
- Konski, “Can AI Transform Precision Medicine?” Personalized Medicine Bulletin (November 3, 2020)
- Konski, “Does Payer Coverage Drive Genomic Test Utilization in the United States?” Personalized Medicine Bulletin (August 26, 2020)
- Konski, “Adjusting to Alice: USPTO’s View of Its Examination Guidelines,” Personalized Medicine Bulletin (April 28, 2020)
- Konski, “Utilization of Natural Phenomenon Found Patent Eligible,” Personalized Medicine Bulletin (March 31, 2020)
- Konski, “USPTO Guidance on Patent-Eligibility of Personalized Therapy,” Personalized Medicine Bulletin (November 12, 2019)
- Konski, “Advancing Access to Precision Medicine Act – A Bipartisan Bill,” Personalized Medicine Bulletin (March 5, 2018)
- Konski, “Why the Federal Circuit Revisited Written Description,” Personalized Medicine Bulletin (July 17, 2017)
- Konski, “Breaking Down Barriers Between Pre-clinical and Clinical Adoption of Personalized Medicine,” Personalized Medicine Bulletin (May 2, 2017)
- Konski, “Forget Bigger Data – Personalized Medicine Needs Smarter Data to Reach Its Full Potential,” Personalized Medicine Bulletin (April 18, 2017)
- Konski, "Legal Challenges to Healthcare Reform Threaten Biopharmaceutical Legislation," GEN (March 2011)
- Konski, "Defining the Scope of Commercial Success," InsideCounsel (January 2011)
- Konski, "Are We There Yet? How to Meet Chinese Patent Law Data Disclosure Requirements," InsideCounsel (January 2011)
- Konski, "Federal Circuit Rules on Patent Eligibility After Bilski," InsideCounsel (December 2010)
- Konski, "Selling and Testing? Mind the On-Sale Bar," InsideCounsel (December 2010)
- Konski and Best, "Stem Cell Funding Controversy Creates Uncertainty for Ongoing and Future Research," AHLA Connections (December 2010)
- Konski, "Does the First Sale Doctrine Apply to Imported Goods?" InsideCounsel (November 2010)
- Konski, "Peer to Patent Announces Third Wave," InsideCounsel (November 2010)
- Best and Konski, "An Unclear Future for Stem Cell Research: District Court Orders Federal Government to Halt Embryonic Stem Cell Research Funding," Foley & Lardner LLP Legal News Alert (August 2010)
- Waltz and Konski, "The Genomics and Personalized Medicine Act of 2010," HealthLaw360 (August 2010)
- Konski, "Reading Tea Leaves: An Update on Personalized Medicine: Innovation, Threats and Opportunities," Bloomberg’s Intellectual Property Law Report (July 2010)
- Konski, "Personalized Medicine: Innovation, Threats and Opportunities," Bloomberg’s Intellectual Property Law Report (July 2010)
- Konski and Waltz, "The Genomics and Personalized Medicine Act of 2010 Introduced in the House of Representatives," Foley & Lardner LLP Legal News Alert (June 2010)
- Konski et al., "Health Care Reform Bill Offers Support for Personalized Medicine," Foley & Lardner LLP Legal News Alert (April 2010)
- Best, et al., "District Court Rules That Genes and Genetic Tests are Not Patentable," Foley & Lardner LLP Legal News Alert (March 2010)
- Konski et al., "From Speculation to Reality: Personalized Medicine and The Genetic Information and Nondiscrimination Act," Foley & Lardner LLP Legal News Alert (November 2009)
- Konski and Spielthenner, "Stem Cell Patents, A Landscape Analysis," Nature Biotechnology (Vol. 27(8), pages 722-726, 2009)
- Konski, Brinckenhoff, Nie, "Genes Under the Microscope – Novel or Not?" Intellectual Property Today (July 2009)
Education
Ms. Konski earned her J.D. degree from Fordham University School of Law where she was a member of the Urban Law Journal. She earned her Bachelor of Science degree from the University of Delaware where she was elected to Omicron Nu Honor Society.
Admissions and Professional Memberships
She is a member of the State Bar of California, the State Bar of New York, the Biotechnology Section of the American Bar Association and the American Intellectual Property Lawyers Association. She is registered to practice before the U.S. Patent and Trademark Office.