MATTHEW BRESNAHAN

Associate
Intellectual Property

EXPERIENCE:

Matt Bresnahan is a senior associate in the San Diego and Los Angeles offices of Wilson Sonsini Goodrich & Rosati, where he has focused his practice over the past 10 years on all aspects of intellectual property, including strategic patent counseling, patent prosecution, licensing, and litigation. Matt is primary outside IP counsel to more than 50 life sciences companies within the biotechnology, molecular biology, pharmaceutical, diagnostic, and medical device fields in Southern California.

Matt has assisted in founding and establishing the IP strategy for more than 25 funded life sciences companies in the past two years. He prosecutes patent applications before the U.S. Patent and Trademark Office (USPTO) and manages and oversees national and international patent portfolios for his clients. Matt has analyzed intellectual property portfolios and performed IP due diligence for both venture capital firms and businesses in a variety of investment environments, including financings, mergers and acquisitions, and initial public offerings (IPOs). He writes opinion letters of counsel, negotiates and drafts transactional agreements, performs IP audits, and formulates and implements IP strategies for both established and emerging growth companies.

Matt draws upon his strong patent litigation background when advising and counseling clients on intellectual property and related business matters on a day-to-day basis. He has litigated patent, trademark, trade-secret theft, and trade-dress IP disputes in a diverse range of technical areas. He successfully tried a three-week patent case in federal court concerning a small molecule therapeutic treatment that was settled favorably for his client after closing arguments and prior to verdict. Matt has successfully obtained favorable institution orders and final written decisions of unpatentability in inter partes review proceedings before the USPTO with respect to patents protecting therapeutic products having billions of dollars in sales per year that would have otherwise blocked commercial launch of his client's products.

Matt is an adjunct professor of law at the University of San Diego School of Law, where he has taught patent law for the past five years.

Prior to joining the firm in 2007, Matt assisted the Honorable Rudi M. Brewster, a patent specialist judge, in the U.S. District Court for the Southern District of California. Matt assisted Judge Brewster with resolving several high-profile and precedent setting patent trials and other intellectual property proceedings, including patent, copyright, and trademark actions.

SELECT CLIENTS AND RECENT TRANSACTIONS:
  • Arrogene in connection with its IP strategy, global patent prosecution, and licensing agreements
  • Black Light Surgical in connection with its IP strategy, global patent prosecution, and licensing agreements
  • BodySync in connection with its IP strategy, global prosecution, and partnering transactions
  • Max BioPharma in connection with its IP strategy, global patent prosecution, and licensing agreements
  • Naked Biome in connection with its IP strategy, global patent prosecution, and licensing agreements
  • NantKwest in connection with its IP strategy and its $207 million IPO
  • NantHealth in connection with its IP strategy and its $91 million IPO
  • NanoTech Energy in connection with its IP strategy, global patent prosecution, and licensing agreements
  • Neothetics in connection with its IP strategy, $65 million IPO, and its global patent prosecution
  • Novonco Therapeutics in connection with its IP strategy, global patent prosecution, and licensing agreements
  • oNKimmune Limited in connection with its IP strategy, global patent prosecution, and licensing agreements
  • Orbsen Therapeutics in connection with its IP strategy, global patent prosecution, and licensing agreements
  • Pfenex in connection with its IP strategy, its $50 million IPO, global patent prosecution, and partnering transactions
  • SuperMetalix in connection with its IP strategy, global patent prosecution, and licensing agreements
  • Tempo Therapeutics in connection with its IP strategy, global patent prosecution, and licensing agreements
  • Velox BioSystems in connection with its IP strategy and licensing agreements
EDUCATION:
  • J.D., University of San Diego School of Law, 2007
  • B.S., Biochemistry, California Polytechnic State University, San Luis Obispo, 2004
ASSOCIATIONS AND MEMBERSHIPS:
  • Member, American Bar Association
  • Member, American Intellectual Property Law Association
  • Member, Los Angeles Intellectual Property Law Association
  • Member, San Diego Intellectual Property Law Association
HONORS:
  • Named to the 2015, 2016, and 2017 San Diego "Rising Stars" lists published by Super Lawyers magazine (top 2.5 percent of all attorneys in California under 40 years of age)
  • Featured in a cover article titled "Students for Startups" in the University of San Diego School of Law alumni magazine (The Advocate, Winter 2012)
  • Named a San Diego Daily Transcript Young Attorney in 2009
  • Honored with the Wiley W. Manuel Award for Pro Bono Legal Services by the State Bar of California, 2009
SELECT SPEAKING ENGAGEMENTS:
  • Speaker, "Effective Patent Prosecution and Licensing Strategies for University Spin-Outs," University of California, San Diego, October 20, 2016
  • Speaker and Moderator, "Nuts and Bolts of the Life Science Start-Up Enterprise," University of California, Irvine, April 22, 2016
  • Speaker, "Effective IP Strategies for Life Sciences Enterprises," Northwestern University, November 4, 2015
  • Presenter, "Essentials of Forming A Company: Developing an Effective IP Strategy," University of California, Los Angeles, October 17, 2015
  • Panelist, "Challenges and Opportunities in the Booming Los Angeles Biotech Industry," Los Angeles Entrepreneurship Summit, June 27, 2015
  • Speaker, "Patent Strategy and IP Diligence for Life Science Start-Ups," University of San Diego, June 10, 2015
  • Speaker, "Review of 2014 and 2015 Supreme Court Patent Cases," University of Southern California, April 6, 2015
  • Speaker, "IP Considerations in Business Transactions," University of San Diego, July 16, 2014
  • Speaker, "Implications of Myriad and Mayo Supreme Court Decisions in Personalized Medicine and Diagnostics," University of California, San Diego, June 11, 2014
  • Speaker, "Patent Considerations for FDA Biosimilar Applicants," PatCon 4: The Annual Patent Conference, San Diego, California, April 4, 2014
  • Adjunct Professor, Patent Law, University of San Diego School of Law, 2013-present
ADMISSIONS:
  • State Bar of California
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Southern District of California
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Patent and Trademark Office

Contact Information

12235 El Camino Real
Suite 200
San Diego, CA 92130
Phone | 858-350-2226
Fax | 858-350-2399

633 West Fifth Street
Suite 1550
Los Angeles, CA 90071
Phone | 323-210-2900
Fax | 866-974-7329

Email | Matthew Bresnahanmbresnahan@wsgr.com


Areas of Expertise

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