Cecily Anne O'Regan

Cecily Anne O'Regan: Attorney with Shartsis Friese LLP
  • Counsel at Shartsis Friese LLP (62 Attorneys)
  • One Maritime Plaza, Eighteenth Floor, San Francisco, CA 94111
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Biography

Cecily Anne O’Regan is Chair of the Firm’s Patent Prosecution Department and a registered patent attorney with over 20 years of experience in patent and intellectual property law. Ms. O’Regan focuses her practice on securing worldwide intellectual property protection and related business strategy for emerging technology clients, with an emphasis in the medical device, biometric, software, and clean technology sectors.

Ms. O’Regan combines legal, academic and business credentials as an entrepreneurial patent professional, with hands-on experience providing strategic, market-focused patent portfolio development and intellectual property advice for clients. She also performs patent due diligence to assess patent portfolios for venture capital investment, mergers and acquisitions, and licensing opportunities.

Prior to joining Shartsis Friese, Ms. O’Regan worked for Greenberg Traurig in its Palo Alto office. Prior to working for Greenberg Traurig Ms. O’Regan worked for Wilson, Sonsini, Goodrich & Rosati in its Palo Alto office, was Vice President of Legal Affairs for a medical device start-up company in the orthopedic space, and worked in the legal departments of both Agilent Technologies and Hewlett Packard Company supporting the medical products division.

Experience

Representative patents prosecuted:

Medical Technology

•U.S. Patent 7,502,641 for Method for Imaging the Relative Motion of Skeletal Segments
•U.S. Patent 8,417,328 for Electrical Systems for Detection and Characterization of Abnormal Tissue and Cells
•U.S. Patent 8,676,293 for Devices, Systems and Methods for Measuring and Evaluating the Motion and Function of Joint Structure and Associated Muscles, Determining Suitability for Orthopedic Intervention, and Evaluating the Efficacy of Orthopedic Intervention
•U.S. Patent 8,721,572 for Systems, Devices, Kits and Methods for Therapy of the Eye
•U.S. Patent 8,771,205 for Cough Detector
•U.S. Patent 8,777,878 for Devices, Systems and Methods for Measuring and Evaluating the Motion and Function of Joints and Associated Muscles
•U.S. Patent 9,026,190 for Portable Physiological Parameter Detection and Monitoring Device with Integratable Computer Memory and Communication Disk, Systems and Methods of Use Therefor
•U.S. Patent 9,277,879 for Systems and Devices for Integrated Imaging System with Real-Time Feedback Loops and Methods Therefor
•U.S. Patent 9,491,415 for Methods, Systems and Devices for Spinal Surgery Position Optimization
•U.S. Patent 9,566,030 for Optical System for Detection and Characterization of Abnormal Tissue and Cells

Electronics and Software

•U.S. Patent 8,374,407 for Live Finger Detection
•U.S. Patent 8,600,122 for Apparatus and Method for Culling Substantially Redundant Data in Fingerprint Sensing Circuits
•U.S. Patent 8,698,594 for System, Device and Method for Securing a User Device Component by Authenticating the User of a Biometric Sensor by Performance of a Replication of a Portion of an Authentication Process Performed at a Remote Computing Device
•U.S. Patent 8,716,613 for Apparatus and Method for Electrostatic Discharge Protection
•U.S. Patent 8,787,632 for Apparatus and Method for Reducing Noise in Fingerprint Sensing Circuits
•U.S. Patent 8,799,666 for Secure User Authentication Using Biometric Information
•U.S. Patent 8,810,457 for Orthogonal Modular Embedded Antenna with Method of Manufacture and Kits Therefor
•U.S. Patent 8,811,723 for User Input Utilizing Dual Line Scanner Apparatus and Method
•U.S. Patent 8,821,242 for Systems and Methods for Enhancing Cognition
•U.S. Patent 8,904,495 for Secure Transaction Systems and Methods
•U.S. Patent 9,116,509 for Rhythm Brain Fitness Processes and Systems
•U.S. Patent 9,595,758 for Dual-band, Series-aligned Antenna, Method of Manufacture and Kits Therefor
•U.S. Patent 9,716,314 for Steering Systems and Methods
•U.S. Patent 9,747,097 for Devices, Systems and Methods for Segmented Device Behavior

Miscellaneous

•U.S. Patent 8,393,298 for Aquarium with Airlift-Generated Rotating Water Flow, Methods of Use and Kits Therefor
•U.S. Patent 8,821,205 for Low-Drag Fin and Foil System for Surfboards

Publications/Speaking

Book

•Co-Author, Intellectual Property: Overview and Strategies for Entrepreneurs, 2017

Articles

•Author, “Using GATT-TRIPs to improve Development Opportunities: A Proposal for Central America,” Hastings Sci. & Tech. L.J. 7, 2015
•Author, “Tips for Getting the Most out of a Bootstrapped IP Budget,” VentureBeat, October 23, 2009
•Author, “Is Intellectual Property a Hurdle for Transferring Technology to Developing Countries? If so, How High of a Hurdle?” Hastings Sci. & Tech. L.J. 1, 2009
•Author, “To Cite or Not to Cite-That is the Question: The Dilemma Faced by U.S. Patent Practitioners in the Wake of McKesson,” CIPA Journal, 2008
•Author, “Can the United States Meet its Obligation to Protect Intellectual Property Rights Under the International GATT/TRIPs Agreement after the Florida Prepaid Cases?” 35 USF L. Rev. 407, 2001
•Co-Author, “Fluid Secretion and Microvillar Ultrastructure in Mosquito Malpighian Tublules,” Am. J. Physiol. 257:R1102, 1989

Speaking Engagements

•Panelist, “Started from the Bottom - Now We’re Here,” Women in Business, November 14, 2017
•Presenter, “Intellectual Property,” 2016 San Francisco Regional Mensa Gathering “Brilliance by the Bay,” November 19, 2016
•Presenter, “Intellectual Property: Understanding the Building Blocks of Silicon Valley,” Osher Lifelong Learning Institute at Santa Clara University, November 2015
•Presenter, “Intellectual Property Overview for Entrepreneurs,” Silicon Valley Immersion Program, School of Management, University of San Francisco, April 2015
•Presenter, “Silicon Valley Entrepreneurial Ecosystem,” University of Potsdam (Germany), March 2013
•Panelist, “How to Protect Your Device and Company Against Counterfeit,” Medical Devices and In Vitro Diagnostics, RAPS Regulatory Convergence conference, Seattle, WA, October 30, 2012
•Presenter, “The Legal Side of Seed,” HBS Angels Webinar, February 29, 2012
•Presenter, “Understanding the Challenges and Opportunities for the Entrepreneur in the Current Economic Climate,” Trinity College Dublin, October 2011
•Presenter, Intellectual Property, Plug and Play Startup Camp, July 2011
•Presenter, “CREAME, Centro Integral de Servicios Empresariales,” Silicon Valley Immersion Program, Colombia and University of San Francisco, July 2011
•Panelist, “Challenges to Safeguarding Your Product in a Global Market,” RAPS Annual Conference & Exhibition, San Jose, CA, October 25, 2010
•Moderator/Presenter, “CREAME, Centro Integral de Servicios Empresariales,” Silicon Valley Immersion Program, Colombia and University of San Francisco, Medellin Colombia, September 2010
•Presenter, “Panel Discussion: Developing and Protecting a Valuable Medical Device Patent Portfolio,” Best Practices for Top Medical Device Executives in Development of IP Documentation, Protection Patents in the US and Abroad and Licensing of IP in Commercial Partnerships Conference, San Mateo, CA, April 2010
•Presenter, “Intellectual Property Overview for Entrepreneurs,” Silicon Valley Immersion for Executive Managers, The School of Business and Professional Studies, University of San Francisco, November 2009
•Presenter, “Intellectual Property Basics for Entrepreneurs,” The Matrix Mixer, The Paul Merage School of Business, Don Beall Center for Innovation and Entrepreneurship, University of California Irvine, October 22, 2009
•Presenter, “The 2009 Reform Act and Updates on Legislation,” Best Practices for Top Medical Device Executives in Development of IP Documentation, Protection Patents in the US and Abroad and Licensing of IP in Commercial Partnerships, San Mateo CA, July 2009

Areas of Practice (4)

  • Intellectual Property
  • Internet and E-Commerce
  • Patents
  • Emerging Companies and Startups

Education & Credentials

Contact Information:
415-773-7381  Phone
(415) 421-2922  Fax
www.sflaw.com/Bios/ORegan-Cecily.htm
University Attended:
University of California at Irvine, B.S.; University of Edinburgh, Scotland
Law School Attended:
University of San Francisco School of Law, J.D.; Was on Law Review; Stanford University; Graduate Certificate in BioDesign
Year of First Admission:
2002
Admission:
U.S. Patent and Trademark Office; Canadian Patent Office; Washington DC; Solicitor in the Senior Courts of England and Wales; U.S. Court of Appeals for the Federal Circuit; U.S. District Court for the Eastern District of California; U.S. District Court for the Northern District of California; Massachusetts; California
Memberships:

Professional Activities

Ms. O'Regan is a named inventor on eight issued patents and 12 patent publications in the medical device and software fields. She is an Adjunct Faculty at the University of San Francisco, School of Management where she teaches Entrepreneurial Management and Entrepreneurial Law, a member of the Advisory Board for the University of San Francisco Entrepreneur Program, a frequent business plan competition judge and entrepreneur mentor, and a published author on intellectual property law. Ms. O'Regan is past president of the Palo Alto University Rotary Club of Rotary International. In 2015 the Palo Alto University Rotary Club awarded Ms. O'Regan the Bo Smith Award for blending the club's vision with that of Rotary International. In 2016 she was awarded the Kenneth C. Kaufman Charter President Award for being the most innovative member in keeping with the club's maverick culture.

ISLN:
916775771

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