Jolene S. Fernandes, J.D., Ph.D., partners with life science clients at all stages of the intellectual property (IP) life cycle, including the creation, commercialization, and enforcement of client IP assets to formulating strategies for mitigating risks posed by competitor IP to further her clients’ business objectives.
Jolene’s practice is focused on IP prosecution and counseling in a diverse array of technologies, including next-generation sequencing (NGS)-based diagnostics, artificial intelligence-based theragnostic platforms, biological therapeutics, including antibodies, vaccines, gene therapy, CAR T cells, exosomes, peptides, chimeric proteins, antisense and siRNA oligonucleotides, stem cells, natural products, digital therapeutics, and alternative energy sources. Jolene has a unique ability to rapidly distill complex, and often interdisciplinary, technical subject matter and provide pragmatic and cogent business solutions for securing and monetizing commercially valuable IP rights. Jolene is a senior counsel and a member of the Chemical, Biotechnology & Pharmaceutical Practice.
Jolene routinely assists her clients with patentability assessments, preparation and prosecution of U.S. and foreign patents, global IP strategy and portfolio management, due diligence relating to joint ventures and acquisitions, preparation and analysis of interinstitutional agreements and licenses, product clearance searches, infringement analysis and preparation of invalidity and noninfringement opinions, inter partes review (IPR) proceedings, and litigation support.
Jolene is especially well-versed in the field of precision oncology. Her experience is routinely sought out by world-class institutions in oncology to develop and implement patent strategies for an entire gamut of oncology-related commercial products, including digital and wet-lab diagnostic tools that leverage genomic, transcriptomic, proteomic, epigenetic, and histological biomarkers, neoantigen vaccines, adoptive cell therapy, radioimmunotherapy, stem cells, and more. Clients value Jolene for her innate talent to connect with all stakeholders within their institutions from high-profile scientists and R&D experts to technology licensing officers, in-house legal departments, and upper management. Jolene enjoys and is committed to assisting clients with delivering these cutting-edge advances to the market.
Jolene deeply values her experience as a Foley-grown attorney, starting from her days as a Foley summer associate in 2012. During her tenure at the California Institute of Technology, Jolene worked as a scientific database curator at WormBase Consortium after obtaining her Ph.D. in biology, with a specialty in molecular biology and developmental genetics.
Awards and Recognition
- The Best Lawyers in America® – Ones to Watch recognition for Intellectual Property (2023)
- Selected as Foley’s 2022 Fellow for the Leadership Council on Legal Diversity (LCLD)
Presentations and Publications
- “LDT Proposals: Concerns about the FDA’s proposal LDT regulations on test providers and patients,” Advanced Healthcare Network for Laboratory (March 14, 2016)
- “Laboratory Developed Tests (LDTs) – An emerging area of FDA regulation,” Advance Healthcare Network for Laboratory (December 28, 2015)
- “Dueling Records: Are Statements in Your 510(k) Putting Your Patents at Risk?” BNA Bloomberg 210 (October 30, 2015)
- “Defensive Publication: An Alternate Way of Maintaining Your Turf in a Competitive Marketplace,” Emerging Company Exchange (April 3, 2014)
- “Perfecting Pregnancy via Preimplantation Genetic Screening: The Quest for an Elusive Standard of Care,” 4 UC Irvine L. Rev. 1295 (2014)
- “Duty to Deal: The Antitrust Antidote to the Gene Patent Dilemma,” 3 UC Irvine L. Rev. 101 (2013)
- “Worm Phenotype Ontology: Integrating Phenotype Data Within and Beyond the C. elegans Community,” 12 Bio-Medical Cent. Bioinformatics 32 (2011)
- “The tailless Ortholog nhr-67 Regulates Patterning of Gene Expression and Morphogenesis in the C. elegans Vulva,” 3 PLOS Genetics e69 (2007)
- “Automatic Categorization of Diverse Experimental Information in the Bioscience Literature,” 13 Bio-Medical Cent. Bioinformatics 16 (2012)
- “WormBase: A Comprehensive Resource for Nematode Research,” 38 Nucleic Acids Res. D463 (2010)
- “The Caenorhabditis elegans Vulva: A Post-embryonic Gene Regulatory Network Controlling Organogenesis,” 105 Proc. Nat’l Acad. Sci. 20095 (2008)
- “WormBase 2007,” 36 Nucleic Acids Res. D612 (2008)
- “Transcriptional Network Underlying Caenorhabditis elegans Vulval Development,” 102 Proc. Nat’l Acad. Sci. 4972 (2005)
- “A Reporter for Amyloid Precursor Protein Gamma-secretase Activity in Drosophila,” 12 Hum. Molecular Genetics 2669 (2003)
- “Gene Expression is not Regulated by Estrogen and/or Progesterone in the Ocular Surface Epithelia of Mice,” 77 Experimental Eye Res. 59 (2003)
- Hindi (fluent)