Jennifer L. Kisko, Ph.D. - Attorney at Law

301 East Pine Street
Suite 1400
Post Office Box 3068 (32802-3068)
Orlando, Florida 32801

P 407-843-8880
F 407-244-5690

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Biography

Dr. Jennifer Kisko has doctoral (Columbia University), post-doctoral (California Institute of Technology, NIH post-doctoral fellow), and industrial biotechnological (DeCode Genetics) scientific experience. Her patent practice has focused primarily on life science, pharmaceutical, chemical, and medical device patent prosecution, freedom-to-operate, patentability, infringement, and invalidity assessments and due diligence efforts for M&A and IPOs in biopharmaceutical (Gilead Sciences), global pharmaceutical (Roche/Genentech), and law firm (Heller Ehrman/GrayRobinson) settings.

The primary technological focus of Jennifer’s patent practice has accordingly been the life sciences, pharmaceuticals, a wide variety of the chemical arts, as well as medical devices, drug delivery applications, and personalized medicine diagnostics. More specifically, Jennifer has extensive scientific expertise and patent experience involving large molecule (antibodies, peptides, nucleic acids, biomarkers for personalized medicine/diagnostics) and small molecule (including nucleosides) pharmaceuticals, various applications of stem cell technologies (embryonic and iPSCs), medicinal chemistry (organic, bioinorganic, and natural products), nucleic acid chemistry (DNA, RNA, RNAi, siRNA, and nucleic acid derivatives as chain terminators), various medical device technologies, polymer chemistry with medical applications such as drug delivery, synthetic organic chemistry, synthetic organometallic/catalyst and inorganic chemistry, molecular biology involved in the development of cancer cell line mutation quantitative and qualitative analysis, X-ray crystallography (small molecule and small molecule docking in large molecule (protein/nucleic acid) targets), chem- and bioinformatics, analytical chemistry (crystallography, GC/MS, LC/MS, HPLC, multinuclear NMR, elemental analysis, FTIR, gel electrophoresis, DNA sequencing, radioisotope handling, phosphorimagery, Surface Plasmon resonance, TGA/DSC) and physical chemistry (lasers (YAG), optics, gas-phase ion spectroscopy). Jennifer also has several years of experience conducting patentability/FTO/competitive intelligence/patent landscaping searching (STN, SciFinder, Questel, Marpat, MMS, Prous Integrity, IDdb3, PharmaProjects, Dialog, Delphion, ChemFinder, Beilstein, Gmelin, Lexis, Westlaw) involving a vast array of technologies.

Jennifer has spent several years focusing her IP practice on patent, trade secret, and know-how matters while employed as in-house patent counsel for over 10 years in both U.S. based biopharmaceutical and internationally based global pharmaceutical organizations. Her practice has focused primarily on counseling US and ex-US client bases in terms of Freedom-to-Operate, patentability assessments, patenting strategies with respect to pursuing pharmaceutical product development and in the context of possible process-based trade secrets and know-how; developing patent landscape issues and potential opportunities with respect to competitive intelligence assessments; engaging in strategic evaluation of independent and collaborative research opportunities in light of third party activities and respective goals; advising research leadership on potential liability issues versus possible strategic gains with respect to pursuing certain scientific directions in light of current IP position, relevant statutory and case law, as well as likelihood of certain outcomes depending of current positioning in research goal attainment as opposed to progression of third party efforts and vested interests in view of budgetary concerns; and guiding late stage research, life-cycle management, and follow-on project efforts with respect to possible directions based on capabilities, market interests, as well as concerns involving third party rights and likelihood of corresponding adverse consequences.

Jennifer joined GrayRobinson in Orlando from Hoffmann-La Roche where she served as a Patent Counsel. She obtained her Ph.D. from Columbia University in Chemistry, conducted post-doctoral research as a post-doctoral fellow at Caltech, and worked as a research scientist across various synthetic, biological, and biomedical aspects of chemistry as well as informatics.

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Background

Jennifer graduated from the University of Florida with a bachelor's of science in chemistry, focusing on experimental physical chemistry related to gas phase ion spectroscopy. She earned her doctor of philosophy from Columbia University, with a concentration in synthetic inorganic and organometallic chemistry. Jennifer later focused on bioinorganic and nucleic acid chemistry as a postdoctoral scholar and recipient of a National Institutes of Health fellowship award at the California Institute of Technology.

Education
  • University of Florida, B.S., chemistry (cum laude, 1993)
  • Columbia University, Ph.D., chemistry (1998)
  • California Institute of Technology, NIH Postdoctoral Fellowship (1999-2001)
  • Golden Gate University School of Law, J.D. (2008)
Admissions
  • California
  • Florida
  • U.S. Patent and Trademark Office
Professional Associations & Memberships
  • American Bar Association
  • American Intellectual Property Law Association
  • The Florida Bar
  • The State Bar of California
Articles & Publications
  • Enablement and Anticipation, Jennifer L. Kisko and Mark L. Bosse, 89 J. Pat. & Trademark Off. Soc'y 144
  • A Rh(III) complex for high-affinity DNA base-pair mismatch recognition, Henrik Junicke, Jonathan R. Hart, Jennifer Kisko. T.; Oleg Glebov; Ilan R. Kirsch.; and Jacqueline K. Barton, Proc. Nat. Acad. Sci., 2003, 100, 3737-3742
  • Detection of DNA Base Mismatches using DNA Intercalators, Boon, E. M.; Kisko, J. L.; Barton, J. K. Methods Enzymol., 2002, 353, 506-522
  • An Iron(III)trichloride adduct of N-isopropylsalicylaldimine: preparation X-ray structure, and NMR spectroscopic characterization, Jennifer L. Kisko, Michele A. Torzilli, Kai Liu, Ann E. McDermott, Robert H. Beer, Inorg. Chem. Comm., 2002, 5, 283-287
  • Recognition of DNA Base Pair Mismatches by a Cyclometalated Rh(III) Intercalator, Kisko, J. L.; Barton, J. K., Inorg. Chem. 2000, 39, 4942-4949
  • The Synthesis and Structural Characterization of Phenyl Tris(3-t-butylpyrazolyl)borato Alkyl Complexes of Magnesium and Zinc, [PhTpBut]MgR (R = Me, Et) and [PhTpBut]ZnMe, Kisko, J. L.; Fillebeen, T.; Hascall, T.; Parkin, G., J. Organomet. Chem. 2000, 596 (1-2), 22-26
  • Phenyl tris(3-tert-butylpyrazolyl)borato complexes of lithium and thallium, [PhTpBut]M (M = Li, Tl): a novel structure for a monomeric tris(pyrazolyl)boratothallium complex and a study of its stereochemical nonrigidity by 1H and 205Tl NMR spectroscopy, Kisko, J. L.; Hascall, T.; Kimblin, C.; Parkin, G. J. Chem. Soc. Dalton Trans. 1999, 1929-1935
  • The Synthesis, Structure, and Reactivity of Phenyl tris(3-t-butylpyrazolyl)borato iron methyl, [PhTpBut]FeMe: Isolation of a Four-Coordinate Monovalent Iron Carbonyl Complex, [PhTpBut]FeCO, Kisko, J. L.; Hascall, T.; Parkin, G. J. Am Chem. Soc. 1998, 120, 10561-10562
  • Multiple Bonding of Titanium and Vanadium to the Heavier Chalcogens: Synthesis and Structures of the Terminal Selenido and Tellurido Complexes [η4 -Me8taa]M=E (M=Ti, V; E=Se, Te), Kisko, J. L.; Hascall, T.; Parkin, G. J. Am. Chem. Soc. 1997, 119, 7609-7610
  •  Vibronic Transitions in Ni2 +, Buthelezi, T.; Bellert, D.; Lewis, V.; Kisko, J.; Brucat, P. J. Chem. Phys. Lett. 1996, 257, 340-346
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