Mika Reiner Mayer

Cooley LLP

Palo Alto

Patent counseling, prosecution

As a young child, Mayer created a traveling toothbrush, which she submitted to Procter & Gamble Co. with hopes the company would buy her invention and produce it.

The company responded with a coupon for a free tube of toothpaste and a note, Mayer said.

"Thank you for your ideas, but you need to go get a patent lawyer and get some patent protection because, you know, we really value intellectual property, and so you should probably get this all squared away before we continue talking," she said of the note.

That experience marked Mayer's introduction to intellectual property and sparked her interest in the field. Today, the Cooley LLP partner is one of the nation's top life sciences patent lawyers. She handles patent prosecution, IP due diligence work and post-issuance proceedings that involve litigation support and inter partes review.

New Leaf Venture Partners, Horizons Ventures, Myovant Sciences, MBM Life Sciences, Frazier Healthcare Partners and Intersect ENT are a handful of her clients in the life sciences sector.

Her recent work with the pharmaceutical company Oyster Point Pharma Inc. has been particularly interesting for Mayer because of the initial difficulties she faced with the portfolio early on. Mayer and her team were able to get Oyster Point the patent protection and financing it needed at what Mayer said was a critical time.

She advised the company as it went public and had to navigate complicated patent issues for the deal.

"It's always great when you can do really good work and enjoy yourself," Mayer said. "It's kind of like a real treasure when that happens."

Demetrix Inc., a biotechnology company specializing in cannabinoid production technology, is also her client.

"I don't know if they've issued yet or if it's just a notice of allowance, but they will be the first company to have a patent covering their particular enzyme that goes into a host cell that produces cannabinoids."

For Mayer, one of the challenges she faces in patent prosecution involves subject matter eligibility.

"The patent office says, 'Look, we don't even think you should get a patent in the first place. Forget about all of the other statutory requirements for patentability. We just don't think this subject matter even falls within an area where you should get a patent to protect it and exclude others,'" she said.

"We see that a lot in the diagnostics space and also in sort of the digital health and the intersection of AI and biotech, where you are trying to get sort of meaningful patent protection.'"

When those difficult situations arise, Mayer has strategies to overcome them.

"I think in those instances, we've been trying really hard to distinguish ... the inventions from what the law says is not protectable by patents," she said. "Number One and Number Two really considering in those instances whether trade secret protection might be a more viable route to go down than patent protection."

-- Kamila Knaudt