Regina Sam Penti
Regina provides strategic intellectual property counsel to clients in the U.S. and Europe. Drawing on a background in electrical engineering and computer science and more than a decade’s experience practicing law, Regina advises a diverse group of clients on patent portfolio assessment, freedom-to-operate, strategic partnerships, and IP-driven transactions. She conducts and defends IP due diligence in connection with technology licensing and transfers, equity investments, and acquisitions. As a dual-qualified U.S. attorney and U.K. solicitor, Regina also counsels companies in contested European proceedings, including serving as counsel of record in oppositions before the European Patent Office.
Regina’s clients range from large sophisticated companies to small startups in the early funding stages, for whom she often serves as de facto in-house IP counsel. Regina has a deep and diverse experience with various technologies, including medical and diagnostic devices, telecommunications networks, speech recognition, data and network security, and media guidance applications.
- Advised Bain Capital Ventures in its growth equity investment in Doc Halo, a pioneer in real-time clinical communication and developer of an award-winning healthcare communication technology.
- Represented a major U.S. media and entertainment company in defending its patents in opposition before the European Patent Office
- Represented a major technology company in licensing negotiations relating to server and distributed storage technology, including assessing infringement claims and successfully identifying patent vulnerabilities that provided leverage in negotiations
- Represented a major hedge fund in successfully negotiating a technology license and service agreement with a trading signal provider
- Conducted and successfully defended freedom-to-operate studies for a cutting-edge point-of-care diagnostic device, resulting in several successful funding rounds
- As in-house IP Counsel on secondment to a major medical device company, advised on several strategic partnerships, including negotiating technology licensing, joint development, supply, and distribution agreements with business partners
- Counseled a U.S. data security company on positioning its software patent portfolio to defend against competitors and attract future acquisitions. Managed and successfully grew the patent portfolio to several hundred patents and applications
- Managed a complex patent portfolio for a networking, data security, and speech company, growing a diverse portfolio that was subsequently acquired by a major defense contractor
- Represented TPG Capital and Fenwal, Inc., a global leader specializing in separation technologies for blood and cell collection and therapy, in the sale of Fenwal to Fresenius Kabi
- Author, The EU’s Unitary Patent and Unified Patent Court: A reference guide to the core legislation, regulations and rules of procedure (March 2017)
- Co-Author, “Europe’s Proposed UPC: A Haven for NPEs or Europe’s PTAB?,” The LOT Network Quarterly Newsletter (Fall 2016)
- Co-Author, “An Imminent Sea Change Across the Pond: Understanding and Preparing for Europe’s New Unitary Patents and Unified Patent Court (UPC),” Boston Patent Law Association (Winter 2016)
- Panelist, “Interplay Between the U.S. and European Patent Systems,” MIP European Patent Forum, Paris (September 2017)
- Moderator, “Patent Trial and Appeal Board (PTAB) and the Role of the Courts,” MIP International Women’s Leadership Forum (June 2017)
- Moderator, “Unified Patent Court: Post-Brexit,” NAPABA Annual Convention (November 2016)