Regina Sam Penti

Counsel

regina-penti

Contact

  • JD, cum laude, Harvard Law School, 2010; Dean’s Scholar Prizes in International Commercial Arbitration and Constitutional Law
  • MEng (Electrical Engineering and Computer Science), Massachusetts Institute of Technology, 2003
  • BS (Electrical Engineering and Computer Science), Massachusetts Institute of Technology, 2002; Eta Kappa Nu, Tau Beta Pi

Qualifications

  • England and Wales, Solicitor
  • New York
  • Massachusetts
  • U.S. Patent and Trademark Office
  • U.K. Intellectual Property Office
  • European Patent Office
  • European Practice Committee Voting Member (2018-2019), Intellectual Property Owners Association
  • Boston IP American Inn of Court
  • Boston Patent Law Association (BPLA)

Regina Sam Penti

Counsel

Regina has advised clients on a broad range of intellectual property issues for over a decade. She has significant experience leading due diligence investigations for technology-driven transactions, including strategic acquisitions and private equity investments, to identify strategies for maximizing IP value and reducing IP-related risks. She has designed and implemented numerous defensive programs to address third-party intellectual property risks, and rendered many legal opinions on non-infringement and invalidity. She also provides strategies for positioning patent portfolios for monetization and defensive purposes, and for licensing and collaborations, including in connection with standard-essential patents (SEPs).

A dual-qualified U.S. lawyer and Solicitor of England and Wales, Regina also represents clients in European patent oppositions and other post-grant patent proceedings. She is the author of The EU's Unitary Patent and Unified Patent Court: A reference guide to the core legislation, regulations and rules of procedure, and speaks and writes regularly about global IP strategies for U.S. companies.

Regina has undergraduate and graduate engineering degrees from MIT, and previously worked in the telecommunications and software industries. She advises on various technologies, including fintech, medtech, diagnostics, software, semiconductor, robotics and automation, blockchain and informatics, among others.

Experience

Intellectual Property Licensing and Transactions

  • 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 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
  • Represented a leading technology company in licensing negotiations related to standard-essential patents
  • Represented a major technology company in licensing negotiations relating to server and distributed storage technology, including assessing infringement assertions 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
  • As in-house IP counsel on secondment to a multi-billion dollar medical device company, advised on several strategic partnerships, including negotiating technology licensing, joint development, supply, and distribution agreements with business partners
  • Advised a leading semiconductor company in connection with various cross-border licensing negotiations and patent asset sales related to advanced semiconductor wafer products

European Oppositions and IPRs

  • Represented a major global media and entertainment company in numerous contentious oppositions at the European Patent Office (EPO), defending a large portfolio of patents deemed foundational to certain electronic systems
  • Represented Seekeeper, Inc. in inter partes reviews (IPR2017-01996, IPR2017-01931) for patents related to cooling apparatus for boats; all IPRs terminated following preliminary response
  • Advised a global technology company in a European patent opposition related to mobile-to-mobile communication technology

Strategic Counseling

  • Conducted and successfully defended freedom-to-operate studies for a cutting-edge point-of-care diagnostic device, resulting in several successful funding rounds, for an award-winning diagnostics start-up
  • Advised a 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 company, growing a diverse portfolio that was subsequently acquired by a major defense contractor
  • Advised several leading technology and life sciences companies in connection with portfolio development and management strategies for large international patent dockets relating to a wide array of technologies in Europe, China, and the United States
  • Represented a global medical equipment manufacturing company on patent claims and strategies to protect its orthopedics and wound care franchises in both the U.S. and Europe
  • Advised in connection with a freedom-to-operate study and pre-market product clearance for a pre-market drug administration system for a multi-billion dollar medical device company
  • Advised a manufacturer and supplier of intraoperative neuromonitoring (IONM) devices in connection with threats of infringement.  Helped identify non-infringement positions, invalidity positions, and design-arounds that led to favorable settlement

Publications

Presentations

  • Speaker, “Analyzing US IP Trends and the Impact on European IP Strategy,” Managing Intellectual Property European Patent Forum 2018 (September 11, 2018) 
  • Speaker, “Practical Implications of Oil States, SAS Institute and Aqua Products on PTAB Practice,” European Committee of the Intellectual Property Owners (IPO) Association (August 16, 2018)
  • Speaker, “Identifying Opportunities for Partnering with FinTech Companies,” Summit on Protecting Innovations in the Financial Services Industry (July 26, 2018)
  • Speaker, “European Patent Practice Points for U.S. Attorneys: Lessons Learned from EPO Oppositions on Parallel Litigations,” Boston Patent Law Association’s Technical Inventions in European Patent Law Conference (June 7, 2018)
  • Speaker, “Beyond NDAs: Managing Confidential Information in M&A and Commercial Agreements,” 4th Annual IP Strategy Summit (May 15, 2018)
  • Speaker, “Blockchain and Cryptocurrency Forum,” Boston Bar Association (March 2018)
  • Speaker, “Semiconductor Industry Roundtable”, Ropes & Gray (March 2018)
  • Speaker, “The Business of Licensing 2.0: Cross-Border IP Licensing,” 40th Global IP Conference and Exhibition (February 2018)
  • Presenter, “European Patent Oppositions for US Lawyers,” Boston Bar Association (February 2018)
  • 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)

Disclaimer

Ropes & Gray International LLP is a limited liability partnership registered in Delaware, United States of America and is a recognised body regulated by the Solicitors Regulation Authority (with registered number 52100).
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