Morgan Xu, PhD

Xianfeng (Morgan) Xu, PhD

Associate

Dr. Xianfeng (Morgan) Xu advises biotech and life sciences clients on all aspects of patent portfolio strategies and management, from US patent prosecution, global patent procurement, post-grant proceedings, to IP landscape counseling. He also assists clients with IP-centric agreement negotiations, patent litigations, M&A diligence, freedom-to-operate and invalidity opinions, and FDA regulatory matters. Dr. Xu has worked with technologies from fields such as immuno-oncology, microbiome, cell and gene therapy, diagnostics, small molecule therapeutics, bioenergy, medical devices, and agricultural breeding and engineering.

Dr. Xu has over 10 years of biotech research experience specializing in molecular cell biology and plant biology. Before joining the firm, Dr. Xu conducted postdoctoral research at Cold Spring Harbor Laboratory studying cell-to-cell communication in stem cell signaling. He published as the lead author in journals such as Science, Current Biology, PNAS, and Plant Cell, and wrote review articles for Trends in Plant Science and Current Opinion of Plant Biology.

Dr. Xu speaks Chinese (Mandarin), and worked at the firm full-time as a patent agent while pursuing his JD degree at night. Dr. Xu maintains an active pro bono practice in assisting low-income immigrants and social entrepreneurs.

Experience

  • Developed and managed a patent portfolio of over 200 cases in microbiome-based therapy through the genesis of a leading clinical-stage biotech startup from a VC-backed single-physician team.
  • Advised an agribusiness multinational in patent matters related to all aspects of crop breeding and biotechnology.
  • Advised a leading tobacco company in IP and diligence related to biotech engineering for harm reduction and trait development.
  • Advised multiple large biopharma companies in BPCIA-related post-grant proceedings at the USPTO, including inter partes review and ex parte reexamination.
  • Advised a public clinical-stage biotech company developing immunotherapies for cancer and inflammatory diseases in IP diligence and transactional matters.
  • Advised a biopharma multinational in negotiating a multi-stage R&D collaboration and license agreement related to oncolytic virus.
  • Advised a biopharma multinational in negotiating a multi-target, multi-billion collaboration and license agreement for developing RNAi therapies for Cardiovascular, Renal, Metabolic and Respiratory diseases.
  • Advised a biopharma multinational in IP diligence for potential acquisition of a gene therapy company for Spinal Muscular Atrophy (SMA).

Perspectives

Drafting Tips
The Licensing Journal, Vol. 40, No. 5
Merger Clauses: "Boilerplate" Results in Unexpected Patent License
Advisory

Recognition

ABA/BNA Award for Excellence – Intellectual Property Law
Awarded by The George Washington University Law School (2017)
Life Sciences Research Foundation Fellow
Awarded by the Life Sciences Research Foundation to exceptional postdoctoral scientists (2009)
Chapman Fellow
Awarded by Cold Spring Harbor Laboratory and sponsored by The Mary K. Chapman Foundations to support groundbreaking biomedical research (2008)

Credentials

Education
  • JD, The George Washington University Law School, 2017, with honors
  • PhD, Plant Biology, The Ohio State University, 2007
  • BS, Biotechnology, Peking University, 2002
Admissions
  • District of Columbia
  • US Patent and Trademark Office
Languages
  • Chinese (Mandarin)
Overview

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