Smith, Gambrell & Russell, LLP

Areas of Practice

Undergraduate School

Law School

Bar Admissions

California, District of Columbia, U.S. Patent & Trademark Office, U.S. Court of Appeals for the Federal Circuit, U.S. District Courts of California, Supreme Court of the United States

Memberships

American Intellectual Property Law Association, Chair, Biotechnology Committee of AIPLA
American Association for the Advancement of Science

Suzannah K. Sundby

Suzannah K. Sundby is a Partner in the Intellectual Property Practice of Smith, Gambrell & Russell, LLP.

Ms. Sundby has extensive experience in patent preparation and prosecution of inventions across diverse technologies including biochemistry, molecular biology, pharmaceuticals, microfluidics, diagnostics, medical devices and nanotechnology. Her legal practice involves patent preparation and prosecution, licensing, opinion work, client counseling and litigation. Ms. Sundby has experience assisting start-up biotech companies with the preparation and prosecution of their foundation patents, nondisclosure agreements and related IP issues. 

Ms. Sundby is the Chair of the Biotechnology Committee of the American Intellectual Property Law Association.

Ms. Sundby taught advanced biotech patent preparation and prosecution as an Adjunct Professor at Franklin Pierce Law Center. Before entering the legal field, Ms. Sundby helped map the Drosophila genome as a member of the University of California's Berkeley Drosophila Genome Group.

Ms. Sundby holds a B.S. in Biochemistry/Molecular Biology and, in addition to earning a Juris Doctor, she earned a Master of Intellectual Property.

Other Publications and Presentations

  • Panelist, " The Incredible Shrinking Patent World: Protecting Medical Device Patents in Light of Increasingly Strict § 101 Patentability Standards" ACI's Medical Device Patents Conference, Chicago, IL, March 24-26, 2014.
  • Panelist, " Through the AIA Prior Art Looking Glass—Understanding the Global Wonderland of Prior Art, and Utilizing Preissuance Submissions, Supplemental Examination, Ex parte Reexamination, and Reissue" ACI's 2nd Comprehensive Guide to Patent Reform, New York, New York, January 23-24, 2014.
  • Panelist, "What IP issues are relevant for successfully commercializing gene and cell therapies?", American Society of Gene & Cell Therapy, 16th Annual Meeting, Salt Lake City, Utah, May 15-19, 2013.
  • Panelist, "An Evolving Patent Claim Quagmire of Eligibility and Infringe-ability – Recent Developments in Patent Claim Eligibility and Joint Infringement" AIPLA 2013 Spring Meeting, Seattle, WA, May 1-3, 2013.
  • Panelist, "Protecting Method and Diagnostic Claims: Tailoring Medical Device Patents to Comply with Increasingly Strict § 101 Patentability Standards" ACI's Medical Device Patents Conference, Chicago, IL, March 5-6, 2013.
  • Panelist, "Gambit: Utilizing Third Party Prior Art Submissions in the Pre-Issuance Chess Match" ACI's 2nd Comprehensive Guide to Patent Reform, New York, New York, January 23-24, 2013.
  • "No One is Patenting Your Genes: The Ripple Effect if Isolated DNA Claims Are Made Patent Ineligible", IPWatchdog.com, December 14, 2012.
  • Panelist, "Scrutinizing the CAFC's Decisions in Akamai and McKesson and Protecting Technology in Their Wake" ACI's 14th Advanced Forum on Biotech Patents, Boston, MA, November 28-29, 2012.
  • "Patent Reform: What UCLA Inventors Need to Know Before Filing", AIA Seminar, Los Angeles, CA, November 5, 2012.
  • "Case Law Update: Predicting the Patentability of Diagnostic Patents Post-Mayo v. Prometheus," American Conference Institute's 6th Tactical and Practical Guide to Freedom to Operate, Philadelphia, PA, July 2012.
  • "Mastering the Intricacies of USPTO Practice Post-Patent Reform: Supervisory Patent Examiners Weigh In," American Conference Institute's Advanced Summit on Medical Device Patents, Boston, MA, February 2012.
  • "The Impact of Recent Patent Law Cases and Developments", Inside the Minds, 2012 Edition.
  • U.S. Patent & Trademark Office's first publicly open "Medical Device Technology Partnership Meeting" held on November 29, 2011, invited panelist member.
  • "How to Get Your Slice of the Functional Food Pie: Patenting Functional Foods and Other Nutraceuticals in the United States," BIO KOREA 2011 Conference, Seoul, Korea, September 2011.
  • "Compacting Prosecution by Interviews: A View From Outside the USPTO," Presentation to Examiner Corps of U.S. Patent & Trademark Office by invitation of David Kappos, the Under Secretary of - Commerce for Intellectual Property and Director of the U.S. Patent & Trademark Office, February 2011.
  • "Drafting and Prosecuting Successful Patent Applications in the U.S. and Abroad in an Evolving Biotech Patent Landscape," 12th Advanced Forum on Biotech Patents, American Conference Institute, Boston, MA, December 2010.
  • "Patenting Biotech Sequences: What's Happened and What To Do Now", Webinar for the Maryland State Bar Association, November 18, 2009.
  • "Do You Really Want to (Attempt to) Patent That", American Conference Institute, 9th Advanced Forum on Biotech Patents: Analysis, Insights and Strategies for New Challenges in Biotech Patent Practice, September 2007.
  • "Protecting Proprietary Information -- Deciding Whether to File for a Patent", American Conference Institute, 9th Advanced Forum on Biotech Patents: Analysis, Insights and Strategies for New Challenges in Biotech Patent Practice, Boston, MA, September 2007.
  • "Biotech and Nanotech Patent Application and Prosecution Strategies", Government Intellectual Property Law Association (GIPLA), Washington, DC, January 2007.
  • "Patent Landscape of H5N1 Influenza Virus", prepared for the World Health Organization, team member, 2007.
  • "How to Lose Your Patent Rights", Frederick Innovative Technology Center, Inc. (FITCI), Frederick, MD, October 2006.
  • "How to Work with Difficult...To Turn an Idea into a Patentable Invention", American Chemical Society Annual Meeting, Atlanta, GA, March 2006.
  • "Technology Licensing - From First Steps to Executing a Plan", Internat'l BioPharm, Volume 17(5), May 2005.
  • "Biotech Patents", Indo-US Symposium on Infectious Disease Research and Development, Bangalore, India, 2004.
  • "IP Law Considerations: Aspects for Small and Medium Enterprises" Asia Pacific Tech Monitor, July-August 2004.
Sundby, Suzannah

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Contact

Suzannah K. Sundby
202-263-4332 phone
202-263-4352 fax

Assistant

Sarah M. Brogi
202-263-4300 x34630
sbrogi@sgrlaw.com

Location

Washington, DC

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