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Overview

Denise brings sophisticated scientific, commercial and legal experience combining patent, health care, pharma, biotech and software/AI advances to protect client assets.

For more than 25 years, Denise’s strong science background—which includes an advanced degree in genetics as well as research in pulmonary medicine, fertility and sterility—has enhanced her strategic legal practice. A skilled and experienced patent attorney (prosecution and litigation), she assists domestic and international clients in identifying, protecting, licensing and litigating bet-the-company technologies.

Always up to date on new IP developments and regulations, Denise works closely with internal corporate and university technology transfer professionals in portfolio development, product commercialization strategies and regulatory compliance resolution. She represents companies directly in negotiating technology licenses, cooperative research agreements, joint venture agreements, international distribution and marketing programs, patent litigation matters and university pooling arrangements. Her gift for finding creative options to resolve present and potential problems results in broad and continuing patent protection for clients.

Denise partners with clients on a wide range of patent matters, including for genetic testing, disease detection and screening tools, veterinary medicine, vaccines, orthopedic devices, dental devices, chemical purification, extraction techniques, and plant products and medicinal plant products such as cannabis.

She counsels clients on matters such as pharmacophore drug modeling and selection, antibody and stem cell technologies, regenerative medicine and stem cell technology, disease-screening methods and bio-signature development and disease detection. She also handles IP matters related to medical devices (spine, shoulder, knee), DEA-regulated research, controlled substances (anabolic steroids, cannabinoids) and Bay-Dole compliance and iEdison reporting.

Denise is registered to practice before the U.S. Patent and Trademark Office. She works closely with clients to maximize an effective path to market, especially for products, methods and systems related to technologies requiring the experienced handling of FDA regulatory compliance issues and trade secret and/or patented technologies in the pharmaceutical, cosmeceutical nutraceutical, dietary health supplement and medical device product areas. Admitted to practice in Washington, D.C., she frequently assists clients in navigating and resolving governmental agency-related issues.


Industry

Services

Education

  • J.D., St. Mary's University School of Law
  • M.S., University of Texas at San Antonio
    • Genetics and Physiology
  • B.A., Trinity University
    • Biology

Admissions

  • Texas
  • Colorado
  • District of Columbia
  • U.S. Patent and Trademark Office
  • U.S. District Court, Western District of Texas
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Supreme Court

Professional Associations and Memberships

  • American Bar Association, Judiciary Committee, Health Law Committee
  • American Chemical Society
  • American Intellectual Property Law Association Biotechnology and Chemical Practice Committee
  • Association of University Technology Managers
  • Association of Women in Science (AWIS), founding member, Austin Chapter, Vice President, 2018
  • ChIPS (Chiefs in Intellectual Property), Austin Chapter
  • Intellectual Property Owners Association
  • IP Law/Tech Transfer MAPs Committee, Chair
  • National Association of College and University Attorneys (NACUA)
  • Tech Ranch, Subject Matter Expert, Intellectual Property
  • Dell Medical School, Texas Health Catalyst Program, Adviser
  • Women in Bio, Texas Chapter, Founding Chair, 2014; President, 2018
  • Licensing Executives Society
  • Certified Licensing Professionals

Languages

  • Spanish, conversant
Featured Experience

Medical Devices

Extensive experience assisting clients in the protection and management of intellectual property assets associated with diverse medical device portfolios, including:

  • Implantable devices for repair of shoulder, spine and knee
  • Suture anchors (soft anchors, knotless and knotted; hard body anchors)
  • Soft tissue repair systems
  • Hard-body anchors
  • Bone drill sets
  • Shoulder, rotator cuff replacement devices
  • Orthopedic screws and pins (hip)
  • Surgical adhesive materials,
  • Sterilized human tissue allografts
  • PTFE grafts
  • Biologically engineered surgical materials (bone putty/bone slurry’s (demineralized), collagen matrix materials, skin tissue gels, tissue adhesives)
  • Wound repair materials (tissue skin graft materials (sheets), wound repair and healing preparations, drug-releasing wound repair materials)
  • Hemostatic and blood collection materials and devices (specialty blood collection devices, blood loss calibrating devices, blood anti-coagulant coated devices, anti- coagulant formulations, treated blood collection bags)
  • Artificial tissue fabrication methods and processed harvested donor tissue fabrication
  • Human tissue sterilization techniques and devices for performing human tissue sterilization suitable for human implantation in compliance with FDA requirements
  • Human amniotic membrane preparations
  • Placenta tissue derived tissue patch
  • Medical device coatings (polymer, anti-bacterial, drug release)
  • Stem cell and implantable device systems for rapid bone and tissue healing/regeneration, bone replacement and bone regenerating materials and methods
  • In vivo cranial bone regeneration materials and methods
  • FDA compliant testing of laboratory procedures for sterilizing tissue grafts from human donor materials (infectious agent testing and compliance study compliance)

Additional Experience

FDA-related experience:

  • Identified and analyzed patents included in Paragraph IV Certification statements in Abbreviated New Drug Applications (ANDA).
  • Assisted clients in developing Phase I, Phase II and Phase III protocols/materials and in meetings with Food and Drug Administration (FDA) officials.
  • Obtained FDA 510(k) clearance for adult stem cell therapeutic methods, stem cell products and processes for producing stem cell related products.
  • Reviewed clients' website materials to remove/edit representations concerning potentially FDA-regulated activity.
  • Advised on physician/clinic client’s exemption  for “off label” use and “practice of medicine” exemption of products.
  • Advised numerous clients during FDA on-site inspection visits.
  • Assisted with therapeutic biological products clearance within FDA’s Drug Evaluation and Research (CDER) office.
  • Advised multiple clients on FDA labeling/branding requirements and misbranding of products, drug or devise under the FDCA, “Rx only” labeling.

Additional experience:

  • Developed proprietary and non-proprietary product and business services commodity pipelines for biologics divisions/spin-offs of large domestic and foreign companies, including Samsung Biologics.
  • Prepared and coordinated the creation of strategic international and domestic patent portfolios in client/corporate target markets.
  • Developed international patent and proprietary information licensing strategies to facilitate new product launches.
  • Developed and secured compliant and coordinated branding (trademark) strategies for domestic and/or international product launches.
  • Negotiated client services agreements and created client materials for providers/manufacturers (quality/specification of materials received, return/refund provisions, suitability for specific commercial uses).
  • Reviewed and developed effective compliant product inserts (FDA, branding) and product packaging.
  • Developed suitable product delivery protocols for perishable and/or limited shelf-life product delivery to consumers/purchasers.
  • Developed appropriate delivery protocols of perishable materials (biological tissues, sensitive biological reagents, etc.).
  • Handled import/export of numerous perishable and/or border-regulated materials.

Human genetics patents:

  • 10,087,489 Biomarkers and uses thereof in prognosis and treatment strategies for right-side colon cancer disease and left-side colon cancer disease
  • 10,087,463 Methods and compositions for transposition using minimal segments of the eukaryotic transformation vector piggyBac
  • 9,956,263 Composition for improving skin conditions comprising a fragment of human heat shock protein 90A as an active ingredient
  • 9,580,756 Stratification of left-side and right-side colon cancer
  • 9,721,067 Accelerated progression relapse test
  • 9,598,460 Antibody purification via affinity chromatography
  • 9,464,328 Biomarkers and uses thereof in prognosis and treatment strategies for right-side colon cancer disease and left-side colon cancer disease
  • 9,357,755 Production of human glycosylated proteins in silk worm
  • 9,283,266 Metastasis inhibition preparations and methods
  • 9,220,770 Extracellular matrix materials as vaccine adjuvants for diseases associated with infectious pathogens or toxins
  • 9,157,909 Male reproductive health panel and uses thereof
  • 9,125,858 Compositions and methods relating to resveratrol
  • 9,006,393 Molecular constructs and uses thereof in ribosomal translational events
  • 8,992,214 Orthodontic self-ligating brackets
  • 8,846,059 Extracellular matrix adjuvant and methods for prevention and/or inhibition of ovarian tumors and ovarian cancer
  • 8,802,113 Extracellular matrix cancer vaccine adjuvant
  • 8,778,362 Anti-tumor/cancer heterologous acellular collagenous preparations and uses thereof
  • 8,778,360 Extracellular matrix cancer vaccine adjuvant
  • 8,637,265 Cathepsin E as a marker of colon cancer
  • 8,597,885 Accelerated progression relapse test
  • 8,512,754 Stabilized products, processes and devices for preparing the same
  • 8,491,947 Paeoniflorin preparations and uses thereof for fat reduction
  • 8,293,088 Direct determination of carbohydrates, amino acids and antibiotics by microchip electrophoresis with pulsed amperometric detection
  • 8,257,715 Tissue vaccines and uses thereof
  • 8,062,646 Tissue vaccines and uses thereof
  • 8,013,022 Stabilized products, process and devices for preparing same
  • 7,943,187 Paeoniflorin preparations and uses thereof for fat reduction
  • 7,932,088 High efficiency transformation of Plasmodium falciparum by the lepidopteran transposon, piggyBac
  • 7,892,750 Cathepsin E as a marker of colon cancer
  • 7,790,677 Insulin production methods and pro-insulin constructs
  • 7,968,324 Helicobacter system and uses thereof
  • 7,632,678 Cancer stem cells and uses thereof
  • 7,534,857 Methods and compositions for the treatment and prevention of staphylococcal infections
  • 7,494,767 Assay for TSG101 as inhibitors of HIV production
  • 7,105,343 Methods and compositions for transposition using minimal segments of the eukaryotic transformation vector Piggybac
  • 6,962,810 Methods and compositions for transposition using minimal segments of the eukaryotic transformation vector piggyBac
  • 6,492,104 EIA test using non-denatured HIV Antigen for Early Detection of HIV Infection
  • 6,136,530 Compositions and methods for assessing risk factors in Alzheimer's disease
  • 5,994,108 Mutant TAR virus and transdominant tat mutants as pharmacological agents
  • 5,919,621 Methods for diagnosing human male infertility
  • 5,856,103 Method for selectively ranking sequences for antisense targeting
  • 5,831,061 Nucleic acid encoding ecdvsis-triggering hormone
  • 5,763,400 Ecdvsis-triggering hormone compositions
  • 5,466,676 Satellite cell proliferation in adult skeletal muscle
  • 2018/0160713 Methods Of Screening
  • 2017/0241971 Phosphorothioate Dnazyme Complexes And Use Thereof
  • 2016/0333413 Breast Cancer Prognostication And Screening Kits And Methods Of Using Same
  • 2016/0039907 Protein Folding And Methods Of Using Same
  • 2017/0333524 Molecular Constructs And Uses Thereof
  • 2017/0247766 Late ER+ Breast Cancer Onset Assessment And Treatment Selection
  • 2010/0186099 Production Of Human Glycosylated Proteins In Silk Worm
  • 2017/0035860 Compositions and methods for treatment of neurogenerative diseases
  • PCT/US2016/29874 Scalable Production Of Standardized Extracellular Vesicles, Extracellular Vesicle Preparations And Uses Thereof
  • PCT/US2007/005072 Piggybac Constructs In Vertebrates
  • PCT/US2015/041625 Molecular Constructs And Uses Thereof
  • PCT/US2016/032913 Triple Negative Breast Cancer Screen And Methods Of Using Same In Patient Treatment Selection And Risk Management
  • PCT/US2015/047052 Late ER+Breast Cancer Onset Assessment And Treatment Selection
  • PCT/US2016/58519 A Picometer-Diameter Pore In An Inorganic Membrane For Sequencing Protein
  • PCT/US2017/031624 Prognosis Biomarkers And Anti-Tumor Compositions Of Targeted Therapeutic Treatments For Triple Negative Breast Cancer
  • 20080146492 Insulin production methods and pro-insulin constructs
  • 20160289291 Lis-Pro Proinsulin Compositions And Methods Of Producing Lis-Pro Insulin Analogs Therefrom
  • 20160030520 Aspart Proinsulin Compositions And Methods Of Producing Aspart Insulin Analogs
  • 20160024168 Aspart Proinsulin Compositions And Methods Of Producing Aspart Insulin Analogs Therefrom
  • 20120214963 Liquid Insulin Compositions And Methods Of Making The Same
  • 20120214965 Lis-Pro Proinsulin Compositions And Methods Of Producing Lis-Pro Insulin Analogs Therefrom
  • 20120214199 Insulin Production Methods And Pro-Insulin Constructs
  • WO/2017070692 A Picometer-Diameter Pore In An Inorganic Membrane For Sequencing Protein
Outside the Office

Encouraged by her adult daughter, Denise has discovered her talent for oil painting.

When Denise gazes at a blank canvas, all her cutting-edge technical and scientific knowledge bows to a burgeoning sense of color, design and self-expression. On her birthday in August 2017, she finished a striking 4-foot by 4-foot painting of an orchid that now hangs in her living room. She named it “Celebration.” For her next birthday, Denise’s daughter, an accomplished painter, presented her with twin canvases, oils and brushes so that together they could create a diptych of an angel’s wings.

Community Leadership

When Denise moved to Austin, no organizations for women in biotechnology existed there or in the rest of the state. She quickly changed all that.

Denise promptly became founding chair of Women in Bio, Austin chapter, in 2014. The group flourished, and three years later, a chapter opened in Houston and the organization became Women in Bio, Texas. Denise is deeply committed to encouraging women’s success in all fields that involve biotechnology. Among the members of Women in Texas are attorneys, physicians at Houston’s M.D. Anderson Cancer Center and professors at the University of Texas.

  • Greater Austin Hispanic Chamber of Commerce, Diplomatic Delegation Member to Mexico 2019; International Committee, Vice Chair
  • Association of University Technology Managers (AUTM), 2019 Annual Convention Planning Committee
  • Notre Dame Club of Austin
  • Mexi-Arte, 2018 Catrina Ball Steering Committee
IP & Healthcare

Intellectual property protection as it touches the healthcare industry is a special subset of Denise’s practice.

Denise negotiates licenses, prosecutes patents and develops portfolios for new products, processes and devices related to every area of healthcare. Highly skilled at navigating FDA and other regulatory compliance issues, she ensures that clients’ inventions have iron-clad protection and a strategically planned path to the marketplace.