Yifan Mao focuses her practice on patent counseling, prosecution, and due diligence matters in the chemistry and life sciences industries, focusing on areas relating to diagnostics, large molecule therapeutics, devices, sequencing, and bioinformatics.
Ms. Mao was a senior patent agent at an agriculture biotechnology company where she developed the company’s patent portfolio on genomics, bioenergy and trait improvement technologies before joining the firm. She held research positions at Genentech and Genencor International (now DuPont Industrial Biosciences) prior to her legal career.
Yifan is the Co-President of the Fremont Union High Schools Foundation, which supports the education of over 10,000 high school students. She previously served as the Foundation’s Grant Chair and Outreach Co-Chair.
Ms. Mao was recognized as a Northern California “Rising Star” in 2022 and the four years immediately preceding for Intellectual Property by Super Lawyers magazine. Her native language is Mandarin Chinese.
Yifan is a frequently invited speaker on topics related to various intellectual property issues and has lectured continuing legal education courses with organizations including TRTCLE and the Practicing Law Institute.
Represent a leading clinical laboratory services provider in intellectual property-related services, including the freedom to operate analyses, patent prosecution and litigation services and due diligence and pre-litigation counseling. Technologies include clinical diagnostic, bioinformatics, and genetic testing and devices.
Represent a chemical company and patentee in asserting patent infringement claims and defending its patents against invalidity contentions.
Counseled a patentee and an international company in a Post Grant Review (PGR) proceeding and defeated the challenger’s patent invalidity challenge before the Patent Trial and Appeal Board.
Represent a biopharmaceutical company developing a patent portfolio in US and EP for its oncology drugs. One of the drugs has been commercialized in China and is being reviewed by the FDA in the United States.
Represent a large international company in patent procurement, diligence, prelitigation counseling, and transactional matters for its sequencing technologies and devices.
Represent an emerging company developing its global patent portfolio for digital diagnostics and devices.
Represent clients in the US, China, Singapore, and Korea at various stages in developing their global patent portfolios and counseling on freedom to operate and patentability issues on technologies relating to diagnostics and therapeutics, immunology, oncology, infectious diseases, and agriculture.
Publications
The Fast and the Furious: Article 76 Proceedings in China Proceed with Speed
1 July, 2022
Santa Clara University School of Law, J.D., High Tech Law Certificate with honors (2014) magna cum laude, Dean’s List, Best Oral Advocate Award, CALI Awards, Witkin Awards, Emery Law Scholarship
Michigan State University, M.S., Biochemistry (2000)
Wuhan University, PR. China, B.S., Microbiology (1995)
U.S. District Court for the Northern District of California – Judge Beth Labson Freeman (August-December 2014)
California (2015)
U.S. Patent and Trademark Office (2007)
San Francisco Intellectual Property Inn of Court, Member
Asian Pacific American Bar Association of Silicon Valley, Member
The Dilemma of Drug Invention: A Written Description of a Healthy Dose, February 8, 2022
Voices of Silence: Applying for Patents to Protect Features That Don't Exist, January 26, 2022
Invention statement or "hunting expedition"? : Support for Claims Involving Intervals, 10 January 2022
Federal Circuit Rules Teva-Lilly Spat for Antibody Compositions and Methods, August 31, 2021
U.S. Patent Trial and Appeal Board Denies Petitioner's Request for Post-Grant Review Withdrawal on the Grounds of 'Too Late', August 25, 2021
Exploring key differences in U.S. and European patent protection strategies for therapeutic antibodies, April 28, 2021
Not Too Late | Submitting Post-Application Data During the Patent Examination Process in Certain Jurisdictions, March 16, 2021
Drug to Biologics Migration: Is Purple the New Orange? February 19, 2021
Things to watch in 2021: Big changes for Chinese pharma companies, 11 Jan 2021
Five takeaways: How can we ensure effective antibody protection? October 22, 2018
Obviousness needs to be clearly described; routine optimizations are not sufficient. August 30, 2017
