Oona M. Johnstone, PhD
Shareholder, Executive Committee Member
| Biotechnology
Overview
Oona Johnstone works closely with life science clients, taking a creative approach to helping them develop IP strategy that is catered to their specific business needs. Oona’s practice includes US and foreign patent prosecution, IP due diligence, FTO and patent landscape analysis, IP transactions, and client counseling related to post-grant proceedings, including inter partes review (IPR), in the areas of biotechnology, pharmaceuticals, and cleantech.
Her experience spans a wide range of technologies including systems and synthetic biology, metabolic engineering, gene editing and gene therapy, nucleic acid-based therapeutics, foodtech, agtech, transgenics, biologics such as antibodies and engineered recombinant proteins, vaccines, and immune-modulating agents.
Oona has a particular interest in technologies impacting the environment and sustainability, such as fermentation-based methods for producing alternative proteins, ingredients and flavors, and the advancement of cellular agriculture-based methods.
She also has extensive experience advising clients on biosimilar/biobetter issues.
Oona regularly counsels corporate clients ranging from start-ups to large multinational companies, financial institutions such as private equity and venture capital firms, non-profit organizations, and universities.
Oona also has experience advising clients on maximizing patent term through patent term adjustment (PTA) and patent term extension (PTE).
Prior to joining Wolf Greenfield, Oona was a postdoctoral researcher in the Department of Systems Biology at Harvard Medical School. Her research, focusing on posttranscriptional gene regulation, was part of a large-scale initiative to use genome-wide technologies to characterize networks of RNA-protein interactions in the developing mammalian brain.
Oona’s doctoral research on RNA helicases helped to elucidate cell biological questions related to RNA localization and translational regulation, while placing these mechanistic insights within the context of the developing embryo.
Oona has authored and co-authored publications in scientific journals including Molecular Cell, Development, Developmental Biology, International Review of Cytology and Annual Review of Genetics.
Experience
- Developed world-wide patent strategy for early-stage biotech company in the area of nucleic acid-based therapeutics.
- Advised synthetic biology company on developing patent strategy for engineered enzymes.
- Advised early-stage companies in the foodtech and agtech spaces.
- Prosecuted patent families related to antibodies and recombinant proteins.
- Developed world-wide patent portfolio related to mRNA vaccine and counseled client on patent term extension (PTE) for mRNA vaccines.
- Counseled biotech/pharma companies on strategy for biosimilar product development.
- Provided IP due diligence and regulatory analysis for multiple biotech/pharma transactions.
- Advised clients on inter partes review (IPR) strategy, including representing Patent Owner BTG International Inc. in an IPR proceeding. Obtained denial of institution.
- Successfully represented Patent Owner in achieving denial of institution of four IPR proceedings in RNA interference technology.
- Conducted pre-suit investigation involving analysis of competitor’s biologic to demonstrate infringement of client’s claims.
- Successfully appealed written description rejection of antibody claims to the Patent Trial and Appeal Board (PTAB) of the US Patent and Trademark Office.
Activities
- ChIPs (Chiefs in Intellectual Property) Network
- Boston Intellectual Property Law Association
- Leadership Council on Legal Diversity (2020)
- Women Entrepreneurs in Science and Technology
- Women in Bio
Recognition
- Recognized as a “Next Generation Partner” in the category of “Patents: prosecution (including reexamination and post-grant proceedings)” by The Legal 500 (2021-2024)
- Finalist in the “US Rising Star - Intellectual Property” category for the LMG Life Sciences Awards, one of only five attorneys recognized in this category (2020)
- Repeatedly named to The Best Lawyers in America®
- Repeatedly named one of Massachusetts Super Lawyers’ “Rising Stars” in the field of intellectual property law
- Awarded a Doctoral Studentship and a Postdoctoral Fellowship from the Canadian Institutes of Health Research
- Received Best Oral Advocate and Distinguished Legal Brief awards in law school Legal Practice Skills class
- Participated in the Walter H. McLaughlin Appellate Advocacy Competition in law school
Interests
Oona is committed to environmental sustainability. She is a Partner in Conservation with the World Wildlife Fund.
In her spare time, she enjoys hiking, ice-skating, cross-country skiing, paddle boarding, and wildlife photography.