Overview

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.

Ms. Mao is the Co-President Elect for 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 2021 and the three years immediately preceding for Intellectual Property by Super Lawyers magazine. Her native language is Mandarin Chinese.

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Experience

Represent a leading clinical laboratory services provider in intellectual property related services, including 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 in developing 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 in developing its global patent portfolio for digital diagnostics and devices.

Represent clients in 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.

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Education

Santa Clara University School of Law J.D. (2014) High Tech Law Certificate with honors, magna cum laude, Dean’s List, Best Oral Advocate Award, CALI Awards, Witkin Awards, Emery Law Scholarship

Michigan State University M.S. (2000) Biochemistry

Wuhan University, PR. China B.S. (1995) Microbiology

Admissions

California (2015)

Court Admissions

U.S. Patent and Trademark Office (2007)

Clerkships

U.S. District Court for the Northern District of California - Honorable Beth Labson Freeman (Aug-Dec 2014)

Professional & Community Activities

San Francisco Intellectual Property Inn of Court, Member

Asian Pacific American Bar Association of Silicon Valley, Member

Fremont Union High Schools Foundation, Co-President

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