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
  • Boston IP American Inn of Court
  • Boston Patent Law Association (BPLA)

Regina Sam Penti

Counsel

Regina’s practice focuses on complex intellectual property matters for technology, medical device, and telecommunication companies and their investors. She advises clients on defensive global patent strategies, U.S. and European post-grant proceedings and oppositions, and IP-driven transactions. She has undergraduate and graduate degrees in Electrical Engineering and Computer Science from the Massachusetts Institute of Technology (MIT).

Prior to joining the firm, Regina worked in the telecommunications industry as a satellite network software engineer, and in the software industry as a consultant to technology companies deploying mission-critical operational systems. She has applied her education and technical training to intellectual property matters involving a wide range of technologies, including orthopedic implants, medical diagnostics, computer systems architecture, semiconductor fabrication and packaging, microelectromechanical systems (MEMS), programmable logic devices, data encryption, microprocessor design, telecommunications, video encoding, memory systems, financial technology (“fintech”), and business methods.

Regina is admitted to practice before the U.S. Patent & Trademark Office and the European Patent Office, and has represented clients before the examination and the opposition divisions of the European Patent Office (EPO) and in appeals and inter partes reviews before the Patent Trial & Appeals Board (PTAB). She has prosecuted large international patent dockets, relating to a wide array of technologies, in jurisdictions across Europe, Asia, and the United States.

Experience

  • 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

Publications

  • Co-author, “Comparing EU And US Standard-Essential Patent Guidance,” Law360 (December 21, 2017) 
  • 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)

Presentations

  • 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).