We’re growing and we’re getting recognition for our life science patent law practice. We’re also updating you on important trends in patent law.
Deborah M. Herzfeld promoted to partner
McNeill Baur proudly announces the promotion of Deborah M. Herzfeld to partner of the firm. Since joining the team in January 2017, as McNeill Baur’s first small-molecule focused attorney, Deb has made significant contributions to the firm’s growth and success through her leadership, integrity, and professional excellence. “We are very excited to promote Deb to partner status at the firm, based on her strong client relationships, excellent work product, and her long tenure of experience as a small-molecule focused attorney,” shares Founding and Managing Partner Rebecca M. McNeill. Joining in the praise for Deb, Managing Partner Rebecca Scarr, PhD, notes that “Deb serves as a leader both within the firm and in the broader IP community through her work as a commentator and lecturer on patent law, as well as her current role as the committee co-chair for the Committee on Appeals to the PTAB for the PTAB Bar.”
Deb’s practice focuses on client counseling and worldwide patent prosecution and portfolio management, with an emphasis on pharmaceutical life cycles and medical devices. Deb has worked in all phases of intellectual property law, beginning her career pursuing both litigation and prosecution work, which allowed her to realize and develop her passion and expertise for both short and long-term portfolio management. Her extensive client counseling experience includes pre-litigation portfolio and due diligence analyses, as well as freedom-to-operate, patentability, validity, and infringement opinion work. These overall “portfolio health” analyses frequently include the development of specific prosecution strategies to correct errors and work around potential obstacles. Deb’s pharmaceutical work also includes Orange Book listings of patents covering FDA-approved products and patent term extension analysis and applications.
mcneill baur ranked top 25 best midsize firm by vault.com
Recently, our non-partner attorneys participated in a Vault.com nationwide assessment of what it is like to work at our firm. Our attorneys provided in-depth information on topics such as career development, job satisfaction, and quality of life rankings. More than 20,000 associates from all practice areas participated in the Vault.com survey in 2021 and our firm earned the #1 national spot for Best Midsize Law Firm for Hours by Vault.com, #3 for Technology & Innovation, #6 for Wellness, #8 for Diversity, and #9 for Quality of Work. We were also recognized for Career Outlook, Firm Culture, Associate/Partner Relations, and Satisfaction, and ranked in the top 25 Best Midsize Law Firms, nationwide and across all practice areas. These rankings support our key firm philosophy that employee satisfaction strengthens are ability to attract and retain talent.
mcneill baur welcomes four professionals to our team
We are pleased to welcome Michael P. Ellenberger to the firm as an Associate. With his background in patent litigation and experience as a researcher with the National Institutes of Health, Michael advises clients with an intricate understanding of the legal and scientific questions that arise during the life cycle of a patent. Michael joins our team after having practiced in the IP Litigation group at Kirkland & Ellis LLP. While at Northwester Pritzker School of Law, Michael worked as a law clerk.
Keun-Young (Kevin) Park, PhD, joins our firm as a Technical Specialist. Kevin will support our team in patent prosecution and counseling in a wide range of chemistry-based technologies. Kevin's interdisciplinary doctoral research involved organic chemistry, chemical biology, polymer chemistry, and materials chemistry. Prior to joining McNeill Baur, Kevin was an intern at the Office for Technology Commercialization at the University of Minnesota, assisting IP officers in assessing the patentability of new technologies.
Please join us in welcoming Ebony M. Jennings to the firm as Patent Prosecution Coordinator. Ebony brings over 20 years’ experience in intellectual property law, with a focus on US and foreign patent filings and prosecution. Prior to joining McNeill Baur, Ebony was employed as an Intellectual Property Specialist at McDermott Will & Emery LLP.
Michelle H. Stoeckel, another new team member, supports the attorneys of the firm as a Professional Development and Recruitment Manager. Michelle has over 15 years’ experience in legal professional development and recruiting. Prior to joining McNeill Baur, Michelle held the position of EE Recruiting and Program Coordinator at Holland & Hart LLP and most recently CLE/Training Manager at Fox Rothschild LLP.
iam patent 1000, lmg life sciences, and managing intellectual property recognizes mcneill baur as a recommended firm in patent prosecution
IAM Patent 1000: Recommended Firm, Patent Prosecution
LMG Life Sciences: Nationally Ranked Firm, Patent Prosecution
Managing Intellectual Property: Regionally Recommended Firm, Patent Prosecution
four mcneill baur partners recognized as leaders in patent prosecution by iam patent 1000, lmg life sciences, and managing intellectual property in 2021
Rebecca M. McNeill, Founding and Managing Partner: Individual Ranking, Patent Prosecution
“One of the best tricks that founding partner Rebecca M. McNeill has mastered is attracting and retaining top talent; while as a practitioner, she aligns her advice with the business needs of each company on her roster, be they publicly traded or early stage. With a varied workload including prosecution, offensive and defensive EPO oppositions and due diligence assignments, she stays sharp and ready for anything.” – IAM Patent 1000
Amelia Feulner Baur, PhD, Founding Partner: Individual Ranking Patent Prosecution
“McNeill Baur founding partner Amelia Feulner Baur, PhD, has made the life sciences her own. She fulfils multiple roles to perfection, from preparation and prosecution lawyer to worldwide patent strategist and due diligence counsel, and excels at individualising her advice cleverly and cost effectively for each client.” – IAM Patent 1000
Rebecca B. Scarr, PhD, Managing Partner: Individual Ranking Patent Prosecution
“A go-to boutique for biotechnology and pharmaceutical companies, McNeill Baur has a number of high functioning, PhD-holding attorneys on deck who are intimately familiar with the life sciences industry and the USPTO environment. One of those is Rebecca B. Scarr, PhD, a meticulous prosecutor and clever portfolio manager who gets the business side of things, too.” – IAM Patent 1000
Rebecca M. McNeill, Founding and Managing Partner: Individual Ranking, Patent Prosecution, Patent Strategy & Management
Amelia Feulner Baur, PhD, Founding Partner: Individual Ranking, Patent Prosecution, Patent Strategy & Management
Rebecca B. Scarr, PhD, Managing Partner: Individual Ranking, Patent Prosecution
Mary R. Henninger, PhD, Partner: Individual Ranking Patent Strategy & Management.
Rebecca M. McNeill, Founding and Managing Partner: IP Patent Star
Amelia Feulner Baur, PhD, Founding Partner: IP Patent Star
Mary R. Henninger, PhD, Partner: IP Patent Star
Rebecca M. McnEill to Deliver Two Strafford Webinars
November 2, 2021
Rebecca M. McNeill, along with Lisa L. Mueller, JD, BS, of Casimir Jones, and Nicholas J. Landau, PhD, of Bradley Arant Boult Cummings, will be speaking in an upcoming Strafford live video webinar, "Patent Protection and Bypass Continuation Applications: Evaluating Benefits and Risks, Navigating Priority" scheduled for Tuesday, November 2, 2021 - 1:00pm-2:30pm EST.
Rebecca M. McNeill along with Jens Viktor Nørgaard, of Høiberg, will be speaking in an upcoming Strafford live video webinar, "Patent Cooperation Treaty: Amending International Applications, Curing Defects, Rectifying Obvious Mistakes, Errors" scheduled for Tuesday, November 30, 2021 - 1:00pm-2:30pm EST.
Mcneill baur welcomes SIX professionals to our team
We are pleased to welcome Lauren V. Blakely to the McNeill Baur team as an Associate. Lauren focuses her practice on patent prosecution and due diligence investigations, collaborating with her clients to craft winning strategies based on a deep understanding of their technologies. Prior to joining McNeill Baur PLLC, Lauren spent five years at Wilmer Cutler Pickering Hale and Dorr LLP, where she had a mixed patent litigation and prosecution practice.
We welcome Michael Liu Su to our firm as an Associate. Michael focuses his practice on patent prosecution and due diligence investigation and has accumulated extensive litigation experience. Michael's technical experience spans a wide range of areas in the life sciences space, including antibodies, enzymes, diagnostic and detection methods, medical devices, and small molecule therapeutics. Prior to joining McNeill Baur, Michael spent six years at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, and three years as a US patent agent in Taiwan.
We are thrilled to welcome Skyla A. Duncan, PhD to the firm as a Technical Specialist. Skyla will assist our team with patent applications, prosecution, diligence, and other counseling matters by evaluating the underlying technology of inventions. Prior to joining McNeill Baur, Skyla completed a postdoctoral research fellowship at Memorial Sloan Kettering Cancer Center in molecular pharmacology and completed her PhD in the field of Microbiology with a dual focus on Immunology and Nanotechnology. Skyla is also pursuing her certification as a patent agent.
Christine A. Donahue joins our firm as a Patent Prosecution Coordinator. Christine brings 20 years of experience in intellectual property law. Prior to joining McNeill Baur, Christine worked for Morrison & Foerster, LLP for 11 years, as a US Patent Secretary and then as a Senior Foreign Filing Specialist.
Angela Zontelli supports our firm as a Patent Prosecution Coordinator. Angela brings 20 years of experience in intellectual property law. Prior to joining McNeill Baur, Angela served more than a decade as an IP Paralegal at 3M Office of Intellectual Property Counsel and then at Duane Morris, LLP, as a Patent Paralegal.
Erin Hodge joins McNeill Baur as Human Resource Specialist. Erin brings 15 years of human resource experience in employee benefits, and talent management to our firm. In her current role, Erin will assist with workplace policies, compliance, recruitment, employee retention, and benefits.
WHEN DOES AN EXCLUSIVE LICENSEE BECOME PATENT OWNER FOR OBVIOUSNESS TYPE DOUBLE PATENTING? SANDOZ ASKS THE SUPREME COURT TO WEIGH IN
Sandoz recently filed a cert petition in Sandoz Inc. v. Immunex Corp. asking the Supreme Court to reverse a split Federal Circuit decision holding that Immunex did not “commonly own” exclusively licensed patents for the purpose of obviousness type double patenting (ODP) because Immunex did not obtain “all substantial rights” to the patents under the license agreement. Immunex Corp. v. Sandoz Inc., 964 F.3d 1049 (Fed. Cir. 2020).
- The interplay of in-licensed IP with other IP owned by the exclusive licensee as in the Immunex case. If licensee obtains all substantial rights to the in-licensed IP, licensee should evaluate any potential ODP in view of other IP owned by licensee.
- The interplay of out-licensed IP with licensor’s retained portfolio. Do terminal disclaimers exist between the out-licensed IP and the retained IP? All parties should keep in mind that enforceability of terminally disclaimed patents requires maintaining common ownership.
Hojung Cho, PhD Recently Named as a Rising Star in Intellectual Property
We are proud to share that Hojung Cho, PhD was recently named as a 2020 Managing Intellectual Property Rising Star (MIP). Hojung counsels clients in biotechnology, pharmaceutical, chemical, diagnostic, and therapeutic device fields, and has a special interest in representing clients with multidisciplinary inventions.
Founding and managing partner Rebecca m. Mcneill elected as Vice president of the boston patent law association
Founding Partner Rebecca M. McNeill has been sworn in as Vice President of the Boston Patent Law Association (BPLA). In this position, Rebecca supports the BPLA’s mission to provide educational programs and a forum for the interchange of ideas and information concerning intellectual property. Rebecca is also serving as the editor of the BPLA newsletter as part of her role. Rebecca has served in leadership roles at the BPLA since 2013 and looks forward to continuing her support of Boston’s vibrant intellectual property community in her new position.
Lmg Life sciences recognizes mcneill baur as a Nationally recommended firm in patent prosecution
For the fourth year in a row, McNeill Baur has been endorsed by LMG Life Sciences as a Nationally Recommended Firm in Patent Prosecution. LMG Life Sciences has identified our firm for its “expertise in patent prosecution” and acknowledged that it is “well-versed in the biotechnology area.”
Founding and Managing Partners Rebecca M. McNeill and Amelia Feulner Baur, PhD, were again individually recognized as IP Stars in Patent Prosecution and Patent Strategy and Management. LMG Life Science points out that both founding partners “continue to be active in patent prosecution and strategic counseling for several major life science partners.” Managing Partner Rebecca B. Scarr, PhD, was also individually recognized as an IP Star for Patent Prosecution. LMG Life Science nominated Rebecca due to her “significant experience as a patent counselor to clients in the biotech and pharmaceutical areas.” Partner Mary R. Henninger, PhD, was individually recognized as an IP Star in Patent Strategy and Management for her “previous experience as a litigator focused on patent prosecution and strategy,” according to LMG Life Sciences.
McNeill baur Attorneys Volunteering during 2020 presidential election
With the 2020 presidential election on the horizon, and a critical need for poll workers across the nation (also known as election officials or election clerks), several McNeill Baur attorneys will volunteer at their community polling stations or provide pre-election support.
Many poll workers that would typically return to volunteer have decided to sit this election out, possibly due to COVID, leaving election officials concerned about proper election day staffing. According to the Chief Election Official of Wisconsin, Meagan Wolfe, “Wisconsin is in need of thousands of its citizens to step up and become poll workers in November.” In Milwaukee, during the April 7 primaries, the number of polling sites was reduced from 180 in 2016 to only 5 in 2020, resulting in long lines and possible no-shows. To help with demand, McNeill Baur Managing Partner Rebecca B. Scarr, PhD has applied to work as a poll worker in Milwaukee, after serving in previous elections as an election observer for various organizations, including the League of Women Voters. Rebecca explains, "After seeing the number of polling places in Milwaukee reduced to 5 in the spring primary, I decided to serve as a poll worker in the November election rather than an election observer so I could have a more direct impact on supporting voting rights in Wisconsin.” McNeill Baur Counsel Deborah M. Herzfeld will also donate her time as an election officer in the Commonwealth of Virginia, with official training beginning soon. Volunteers ensuring integrity during the voting process.
Both prior to and on election day, volunteer lawyers, law students, and paralegals also answer voters’ questions through call centers across the nation. Founding and Managing Partner Rebecca M. McNeill is providing pro bono assistance through The Lawyers’ Committee for Civil Rights nonpartisan Election Protection coalition. The 2020 Election Protection movement provides Americans with information and support through the entire process of voting. They have created a nationwide hotline, 866-OUR-VOTE, where volunteers can answer questions about registering to vote, polling places, voting by mail, absentee and early ballot voting, dealing with obstacles to casting a vote at the polls (including identification requirements, disabilities, translation issues, long lines, and malfunctioning equipment). Election Protection also addresses voter intimidation at the polls and answers questions from poll workers and poll observers. This organization’s goal is “to protect, advance, and defend the right to vote,” regardless of political party.
McNeill baur expands chemical and biologics practice
Mary E. Chlebowski, PhD joins McNeill Baur as Counsel. Mary focuses her practice on worldwide patent prosecution and portfolio management in the chemical and pharmaceutical sciences. Mary has a wide range of prosecution experience including application drafting, prosecuting world-wide applications, and interference work. In addition, Mary has worked on oppositions to applications and patents including third-party submissions in the US and oppositions before the European Patent Office. Prior to joining McNeill Baur PLLC, Mary spent more than 10 years as a patent attorney at Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP, most recently as an expert prosecution trainer.
McNeill Baur welcomes Poh Teng, PhD to the firm as a patent agent. Poh brings 14 years of scientific research expertise in basic and applied biological research, including protein structure and function, strain and pathway engineering, amyloid diseases, cancer biology, and infectious disease. Poh focuses her practice on US and International patent preparation, prosecution, and client counseling. Prior to joining McNeill Baur PLLC, Poh was a patent agent at Lygos, Inc. and Solar Junction Corp., where she worked in close collaboration with biology, chemistry, engineering, and legal teams to strategically protect technologies and pipeline products.
IAM patent 1000 names mcneill baur to 2020 list of recommended patent prosecution firms
We are excited to announce that for the third year in a row, McNeill Baur has been nationally ranked by IAM Patent 1000 as a recommended firm in the Patent Prosecution category. IAM Patent 1000 has identified our firm as outstanding in our depth of expertise, market presence, and level of work alongside thousands of firms worldwide. IAM emphasized that our firm brings "quality prosecution and counselling services to life science innovators" and praised our "highly agile, flexible manner". We are honored to have received this recognition!
IAM Patent 1000 names three mcneill baur attorneys to 2020 list of leading patent professionals
Once again, partners Rebecca M. McNeill, Amelia Feulner Baur, PhD, and Rebecca B. Scarr PhD were individually recognized as leaders in Patent Prosecution by IAM Patent 1000. IAM reports Rebecca M. McNeill “regularly drops pearls of strategic wisdom in a board meeting and is as much a business as a legal partner to her clients”. In selecting Amelia Feulner Baur, PhD, IAM points to her “first-class counselling service which – benefiting from her environment in a firm without a bricks and mortar presence, McNeill Baur – is consistently cost-effective. Her recent practice has incorporated an increasing amount of diligence and deal work, giving her a pin-sharp understanding of patent quality and validity.” IAM described Rebecca B. Scarr, PhD as “having a finely tuned sense of the competitive landscape in which her pharmaceutical and biotechnology followers operate; she puts it to excellent use as a prosecutor, portfolio manager and counsellor, securing watertight, broad-scope and commercially targeted patent protection”.
McNeill Baur supports equal justice initiative
In the face of recent racial injustice and violent acts that have taken place throughout our country, our hearts go out to those who have been affected, directly or indirectly, by racism, prejudice, police brutality, and legal system bias. We condemn not only the outrageous recent examples of police violence against the black community, but also the dangerous attitudes that led to them. And we strongly support the right to protest peacefully. Only by actively working to change ourselves and those around us can we be a part of the solution.
To show our support and commitment, McNeill Baur has donated to Equal Justice Initiative (www.eji.org), hoping that together, we can protect fundamental human rights and bring peace and equality to our country.
McNeill Baur welcomes two attorneys and one patent agent
We are delighted to have Dorothy Du LeRay join McNeill Baur. Dorothy combines experience as a judicial clerk for the Honorable Kathleen M. O’Malley at the Federal Circuit with a rich background in pharmaceutical litigation to prepare the firm’s clients for expected and unexpected contingencies regarding their IP. Dorothy has a significant background representing innovator companies seeking to protect or challenge patents as part of licensing negotiations, in district court and before the USPTO. Dorothy earned her JD from Harvard Law School where she was a Dean’s Scholar in Patent Litigation Workshop. Dorothy joins the firm from Patterson Belknap Webb & Tyler, LLP where she was an associate.
Bringing a wealth of patent prosecution and counseling experience to the firm’s chemical clients, Julie L. Heinrich, PhD joins the firm. Julie earned her PhD in Chemistry from the University of California, San Diego before receiving her JD from Santa Clara School of Law where she was inducted as a member of the Order of the Coif. Julie started her career in intellectual property as a full-time patent agent and part-time law student at firms including Foley and Lardner and Finnegan Henderson. Most recently, Julie served as Senior Intellectual Property Counsel for NOVA Chemicals, Inc.
McNeill Baur welcomes chemist Jane Kuzelka, PhD to the firm. Jane is admitted to the USPTO as a patent agent and focuses her practice on patent drafting and prosecution in the chemical sciences, with emphasis on small molecule pharmaceuticals. Jane’s technical background includes both synthetic chemistry and biochemistry. Jane earned her PhD from Massachusetts Institute of Technology and completed her postdoctoral work at The Scripps Research Institute. Prior to joining McNeill Baur, Jane was a patent agent for over 7 years at Morrison Foerster LLP, where she developed her patent prosecution and counseling skills.
Managing intellectual propery (MIP) names Mcneill baur to 2020 list of IP stars as Notable firm in patent prosecution
Once again, McNeill Baur PLLC, has been nationally ranked by Managing Intellectual Property (MIP) in its 2020 IP Stars as a Notable Firm in the Patent Prosecution Category. This is the third year in a row McNeill Baur PLLC has been recognized. In addition, for the fifth consecutive year, MIP awarded individual 2020 IP Stars of recognition to founding partners Rebecca M. McNeill and Amelia Feulner Baur, PhD, and partner Mary R. Henninger, PhD.
MIP’s rankings are compiled from research that includes market surveys, feedback interviews, and a review of the firm’s work history. The firm and its partners feel honored by this recognition. We are proud that MIP, a leading source of information on worldwide intellectual property, has independently affirmed our firm’s high standards of performance.
Mcneill baur adds two experienced professionals to its patent prosecution coordinator team
We are pleased to introduce the newest members of our talented support group.
Catherine (Katie) Langlais comes to McNeill Baur with over 10 years’ experience in domestic and foreign patent prosecution. Prior to joining our team, Katie was a Senior IP Legal Secretary at Holland & Knight.
Molly Morris joins our team with more than 11 years of experience managing large US and foreign patent portfolios for a diverse client base. Molly’s most recent position was as Senior Patent Paralegal with ALG Intellectual Property.
rebecca m. Mcneill and jens viktor nørgaard to deliver strafford webinar on maximizing prosecution opportunities in europe- july 9, 2020
Rebecca M. McNeill and Jens Viktor Nørgaard will deliver a Strafford Webinar on Maximizing Prosecution Opportunities in Europe: Tactics for Counsel When Drafting U.S.-Origin Applications on July 9, 2020, from 1:00 pm-2:30 pm, EDT.
This CLE webinar will guide patent counsel in drafting U.S. origin patent applications to maximize prosecution opportunities in both the U.S. and Europe. After discussing each area, the panel will offer best practices for U.S. patent application drafters to protect inventions in Europe without sacrificing U.S. strategy.
"Maximizing Patent Prosecution Opportunities in Europe: Tactics for Counsel When Drafting U.S.-Origin Applications" scheduled for Thursday, July 9, 1:00pm-2:30pm EDT.
Or call 1-800-926-7926
Ask for Maximizing Patent Prosecution Opportunities in Europe on 7/9/2020
Mention code: ZDFCA for 50% off registration
Rebecca M. McNeill has a number of free passes, please contact her directly.
mcneill baur founding partner Rebecca M. Mcneill coauthors article on patent ownership
Founding Partner, Rebecca M. McNeill, coauthored “Who Owns That Patent? Do Your Interactions with Others Jeopardize Your Patent Ownership?” (Landslide, Vol. 12, No. 2, November/December 2019). Although patent rights form the backbone of many companies’ business plans, businesses often do not adequately consider the risks to their patent estate when they interact with outside parties. The article discusses how interactions with others can jeopardize a company’s exclusive patent ownership.
We understand the growing concern associated with COVID-19 and want to assure our clients that the team at McNeill Baur is operating with all attorneys, patent agents, and staff members currently working. The firm’s business model established in 2014 uses cloud-based document management and docketing systems accessible to all the attorneys, patent agents, and staff from existing home-based offices utilizing firm-provided equipment. You can continue to reach us at our business telephone numbers. Geographically, we operate across the US and can shift work if the need were to arise. During this unusual time, some of the firm’s team members may work alternative schedules outside of normal business hours. We do not anticipate any major interruptions, but we will be impacted by the measures taken by the US Patent & Trademark Office, foreign patent offices, and the foreign counsel we work with.
For the Third consecutive year, LMG names mCneill baur as a Nationally recognized firm for patent prosecution and three partners as 2019 IP Stars
McNeill Baur is proud to be included in 2019 LMG Life Sciences Guide. Of particular importance to founding partners Rebecca M. McNeill and Amelia Feulner Baur, PhD, is LMG’s goal to identify excellent firms and attorneys in the field of life sciences because that is our sole area of practice. LMG notes that both founding partners continue to be active in patent prosecution and strategic counseling for several major life sciences clients, and the firm’s practitioners are well-versed in the biotechnology area.
Also, for the third consecutive year, LMG named founding partners Rebecca M. McNeill and Amelia Feulner Baur, PhD, and partner Mary R. Henninger, PhD, as IP Stars in the annual LMG Life Sciences Guide. These individual achievements validate the firm’s mission to provide top quality services to its clients in all facets of life sciences patent prosecution and counseling. The excellence of these individuals permeates everything the firm does and is a leading factor in McNeill Baur’s achieving recognition as a nationally recommended firm.
McNeill Baur Welcomes Leah Landry to its Financial Services Team
Leah Landry has joined the firm’s financial services team with five years of experience in the legal industry. Prior to joining McNeill Baur, Leah was an Accounts Receivable Assistant Manager with a multi-state law firm. In her prior position, Leah was responsible for training her colleagues, in addition to generating client invoices and working with electronic billing systems.
mcneill baur and its partners again nationally ranked by managing intellectual property
For the second year in a row, McNeill Baur, PLLC, has been nationally ranked by Managing Intellectual Property (MIP) in its 2019 IP Stars as a Notable Firm in the Patent Prosecution Category. The firm has also been recognized for their patent prosecution expertise in Massachusetts.
In addition, for the third consecutive year, individual 2019 IP Stars of recognition were given to founding partners Rebecca M. McNeill and Amelia Feulner Baur, PhD, and partner, Mary R. Henninger, PhD. MIP’s rankings are compiled from research that includes market surveys, feedback interviews, and a review of the firm’s work information.
The firm and its partners feel honored by this recognition. We are proud that MIP, a leading source of information on worldwide intellectual property, has independently affirmed our firm’s high standards of performance.
founding partner rebecca m. McNeill writes about importance of on-ramping in recruiting
Law firms can access wider talent pools by creating on ramps for attorneys and support staff who have left the work force to care for growing families or for other reasons. While many law firms, including ours, offer part-time employment, sometimes an employee, such as a working parent, leaves the work force for a period of time. Whether working parents lean in, balance it all, or take a break from their careers, employers should cast a wide recruiting net. The number of open positions in law firms and corporate legal departments shows that finding and retaining legal talent presents a major challenge.
In this article, Rebecca discusses structural changes law firms can make to recruiting, interviewing, part-time hour policies and compensation, work assignments, and long term career paths. Rebecca’s article was featured on Author Susan Smith Blakeley’s website. Susan’s writing has been recognized as making a positive difference for women in the law.
Legislative update: patentable subject matter
We are optimistic about possible legislative reform to 35 USC § 101 to reform patentable subject matter problems in the biotech industry. Senator Chris Coons, D-Del., and Thom Tillis, R-N.C., have formed a bipartisan legislative roundtable including major stakeholders in the patent community. The roundtable has met in Washington, DC several times to discuss different points of view about patentable subject matter and whether to reform § 101. The Senators have invited companies, industry groups, and bar associations to brainstorm solutions to patentable subject matter problems. Founding Partner Rebecca M. McNeill serves on the Boston Patent Law Association Board of Governors and has participated in preparing written submissions to the legislative roundtable. Many feel that continuing to exclude isolated natural products and diagnostic methods will inhibit innovation and cause long-term harm to patients who need new biologic treatments and/or advanced diagnostics. We encourage clients and friends of the firm to follow these important legislative developments.
mcneill baur practice manager to copresent seminar for patent resources group
On June 3-6, 2019, Catherine Van Houten will join Carl Oppedahl of Oppedahl Patent Law Firm LLC to present Patent Administration II: Building on a Solid Foundation. The four-day seminar for patent support professionals covers many advanced patent prosecution subjects including preparing and filing continuing applications, best practices for docketing, calculating and review of patent term adjustment, and how a terminal disclaimer affects a patent’s expiration date. The course will be held in Glendale, California. For more information and to register, visit the Patent Resources Group website.
mcneill baur Sponsors 2019 bio ipcc Spring conference
McNeill Baur partnered with BIO again this Spring as a sponsor of the IP Counsels Committee Conference (IPCC) held on April 8-10, 2019, in Denver, Colorado. Mary R. Henninger, PhD and Amelia Feulner Baur, PhD represented the firm. Founding Partner Amelia Feulner Baur, PhD participated in a panel discussion “Promoting the Progress of Science? Recent Developments in the Application of Section 101.”
The firm looks forward to continuing to expand in its participation with BioIPCC as an important resource group to the biotechnology industry.
mcneill baur promotes Adam m. breier, phd, to partner
The firm is proud to announce that Adam M. Breier, PhD, has been made a partner of the firm. Since joining the firm in 2015, Adam has made substantial contributions to McNeill Baur’s growth and success. Clients and colleagues alike place their trust in Adam, and all the partners are thrilled to welcome him to the partnership. In making the announcement to the firm, founder Rebecca M. McNeill remarked that “Adam is truly a ‘superstar’ with exceptional legal and technical talent.” Founder Amelia Feulner Baur, PhD commented that “the firm and its clients have benefited from Adam’s deep chemistry and biological knowledge and experience, as well as his keen ability to focus on relevant issues and efficiently deliver top-notch work product.”
McNeill Baur Partner rebecca m. mcneill elected as secretary of the boston patent law association
Founding partner Rebecca M. McNeill has been sworn in as Secretary of the Boston Patent Law Association (BPLA). Rebecca is honored to join other BPLA officers, including Deirdre Sanders from Hamilton Brook Smith Reynolds, Michael Bergman from Bergman, Daniel Young from Wolf, Greenfield & Sacks, and Keith Toms from McCarter & English. In this position, Rebecca supports the BPLA’s mission to provide educational programs and a forum for the interchange of ideas and information concerning intellectual property. Rebecca has served in leadership roles at the BPLA since 2013 and looks forward to continuing her support of Boston’s vibrant intellectual property community in her new position as Secretary.
LMG LIFE SCIENCES Names McNeill Baur as a Nationally Recommended Firm for Patent Prosecution
LMG Life Sciences recognized McNeill Baur in its 2018 LMG Life Sciences Intellectual Property Firm national rankings, published in November. The firm appreciates being named to this prestigious list in recognition for its continued commitment to providing superior client service.
LMG LIFE SCIENCES names Three McNeill Baur Partners AS intellectual property stars
In its 2018 LMG Life Sciences Stars rankings, published in November, three McNeill Baur partners were individually recognized and recommended as leaders in patent prosecution, and patent strategy & management. Founding partners Rebecca M. McNeill, Amelia Feulner Baur, PhD, and partner Mary R. Henninger, PhD, have held this designation for consecutive years. “We welcome this important recognition for our continuing dedication to client service and excellence” said Rebecca M. McNeill. Amelia Feulner Baur, PhD notes that “everyone at McNeill Baur feels proud of our collective and individual recognition for our efforts in protecting our clients’ important intellectual property rights.”
USPTO Issues New Patent Eligibility Guidance
The US Patent and Trademark Office began the New Year by issuing a new patent eligibility guidance document, as well as accompanying implementation examples, which are available here. While the January 7, 2019 Guidance is in immediate effect, the USPTO invites public comments until March 8, 2019.
USPTO examiners currently use a two-part test to determine whether a claim is patent eligible. Under Step 2A, examiners determine whether the claim is “directed to” a judicial exception such as an abstract idea or a law of nature or a natural product. If the claim is determined to be “directed to” a judicial exception, then, under Step 2B, examiners determine whether there are additional steps or elements of the claim that, alone or in combination, operate such that the claim as a whole amounts to “significantly more” than the judicial exception.
The new Guidance seeks to provide greater clarity to the evaluation of claims reciting “abstract ideas” by changing Step 2A of the analysis in two ways. First, the Guidance re-defines what constitutes an “abstract idea.” An “abstract idea” must fall into one of three categories:
- mathematical concepts, such as mathematical relationships, mathematical formulas or equations, or mathematical calculations;
- certain methods of organizing human activity, such as fundamental economic principles or practices, or commercial or legal interactions, and others enumerated in the Guidance; and
- mental processes, i.e., concepts that can be performed in the human mind, such as observation, evaluation, judgment, or opinion.
The Guidance allows for exceptions to these three categories, but only if the examiner follows a specific set of procedures.
Second, if a claim recites an abstract idea as defined above, the Guidance requires the examiner under Step 2A to determine whether or not the abstract idea is “integrated into a practical application” of the idea. To do this, the examiner must identify whether there are any additional elements recited in the claim beyond the abstract idea, and then evaluate those additional elements individually and in combination to determine whether they integrate the exception into a practical application. Only if the examiner concludes that an abstract idea is not “integrated into a practical application” should the examiner further evaluate the claim under Step 2B.
Importantly, determining if the abstract idea is “integrated into a practical application” under Step 2A does not depend on whether or not additional claim elements are “well-understood, routine, and conventional” in the art. Instead, whether an abstract idea is “integrated” depends on a number of criteria based on recent court decisions, which are listed in the Guidance document, for example, whether an additional element reflects an improvement in the functioning of a computer or an improvement to other technology or technical field, or whether an additional element applies or uses a judicial exception in the treatment or prophylaxis of a disease or medical condition.
Only if an examiner properly determines that a claim is drawn to an abstract idea that is not “integrated into a practical application” should the examiner move on to re-evaluate the claim under Step 2B, the second step of the eligibility test. And it is only under Step 2B that the conventionality or routineness of claim elements should be considered.
Overall, this Guidance might lead to fewer patent eligibility rejections for certain types of claims. And, while the new guidance does not directly address other judicial exceptions such as natural materials, laws of nature and natural phenomena, the Guidance directs examiners to determine whether all types of judicial exceptions are “integrated into a practical application” as a part of the eligibility analysis.
rebecca mcneill delivers webinar on "maximizing prosecution opportunities in europe"
Rebecca M. McNeill participated in a Strafford live webinar on January 10, 2019, “Maximizing Patent Prosecution Opportunities in Europe: Tactics for Counsel when Drafting US-Origin Applications” along with copresenter Jens Viktor Nørgaard of the HØIBERG firm in Denmark.
The panel provided guidance for patent counsel in drafting U.S.-origin patent applications to maximize prosecution opportunities in both the U.S. and Europe. After discussing each area, the panel also offered best practices for U.S. patent application drafters to protect inventions in Europe without sacrificing U.S. strategy.
To download a recording of the seminar, follow this link: Maximizing Patent Prosecution Opportunities in Europe, or call 1-800-926-7926. Use code ZDFCA for 50% off the regular price.
IAM Names McNeill Baur as a Nationally Recommended Firm for Patent Prosecution
IAM recognized McNeill Baur in its 2018 IAM Patent 1000 rankings. In announcing the firm’s selection for a national ranking, IAM highlighted the firm’s superior client service with easily accessible, proactive patent attorneys. IAM also applauded McNeill Baur for maintaining a “laser focus” and helping its clients realize their business objectives. The firm is proud of our ranking on this prestigious list.
IAM Recognizes Three McNeill Baur Partners in Its List of the World’s Leading Patent Professionals
In its 2018 IAM Patent 1000 rankings, three McNeill Baur partners were individually recognized and recommended as leaders in patent prosecution. IAM lauded Rebecca McNeill for her impressive mix of biotech start-ups, foundations, and multinational clients. IAM described Amelia Feulner Baur, PhD, as a “scientific whizz” and quoted her clients’ descriptions of Amelia’s advice as “absolutely top notch” and that she “work[s] quickly without comprising at all on quality.” In selecting Rebecca B. Scarr, PhD, IAM points to her sparkling credentials and states that she “matches cost and time efficiency with thoroughness when obtaining watertight patent prosecution for pharmaceutical and biotechnology entities.”
McNeill Baur Sponsors 2018 BIO IPCC Fall Conference
McNeill Baur will partner with BIO in sponsoring a Networking Happy Hour, during BIO’s IP Counsels Committee Conference (IPCC) on November 14-16, 2018, in Indianapolis, Indiana. At this annual informative and networking event, McNeill Baur Founding Partner Amelia Feulner Baur, PhD, and partner Elizabeth B. Doherty, PhD, will represent the firm.
BIO IPCC is widely recognized as one of the best spaces for biotech patent attorneys to discuss important legal developments. To learn more about this event or register, visit the BIO IPCC page.
McNeill Baur Counsel to Present AIPLA Webinar
On October 9, 2018, McNeill Baur counsel, Hojung Cho, PhD, will present a live webinar entitled “Lessons from Recent CAFC Decisions and PTAB Challenges” for the AIPLA. Hojung and her co-speaker Pratibha Khanduri of Sterne, Kessler, Goldstein & Fox PLLC will discuss relevant information for preparing and prosecuting patent applications and for evaluating pending and issued patents, gleaned from recent CAFC decisions and PTAB challenges. For more program information, visit the AIPLA website. To receive a discounted price on registration please contact Hojung Cho, PhD.
McNeill Baur Practice Manager to Chair the 17th Annual Conference for Senior Patent Administrators
On September 27-28, 2018, firm Practice Manager, Catherine Van Houten, will participate in the 17th Annual Conference for Senior Patent Administrators. In addition to serving as Chair for the event, Catherine will give a presentation on procedures for filing Petitions in the USPTO. Catherine speaks and teaches frequently on patent firm administration and she is well-recognized for her knowledge and leadership ability. The conference, held annually in London, is attended by patent administrative professionals from throughout Europe and provides attendees with current information and best practices for patent prosecution support in the US, EPO, and WIPO. For more information about the conference, please visit the Management Forum’s Website.
MCNEILL BAUR NATIONALLY RANKED BY MANAGING INTELLECTUAL PROPERTY (MIP)
McNeill Baur PLLC has been nationally ranked by Managing Intellectual Property (MIP) as a Notable Firm in its Patent Prosecution category as part of MIP’s 2018 IP STARS. Founding partners Rebecca M. McNeill and Amelia Feulner Baur, PhD, as well as partner Mary R. Henninger, PhD, also received
individual rankings as MIP Stars. MIP’s rankings are compiled from research including market surveys, feedback interviews, and review of each firm’s work information. We are honored to receive our first national ranking from MIP recognizing all of the firm’s talented attorneys, agent, and
staff for their excellent service to our clients.
MIP is a leading source of news and analysis on all intellectual property developments worldwide. Annually, MIP conducts its IP Survey, contacting global practitioners (including in-house counsel and law firm attorneys) across 80 jurisdictions to identify and rank leading law firms in the IP field.
MCNEILL BAUR SPONSORS 2018 BIO IPCC SPRING CONFERENCE
McNeill Baur will partner with BIO in sponsoring the IP Counsels Committee Conference (IPCC) on April 11-13, 2018, in New Orleans, Louisiana. During the two-day conference, McNeill Baur Founding Partner Rebecca M. McNeill will participate in a panel discussion “Did You Forget Anything? Dealing
with the Overlooked Provisions of the AIA.” With other panelists, Rebecca will discuss derivation proceedings, supplemental examination, prior art submissions, and grace period for inventor disclosures.
BIO IPCC is widely recognized as one of the best spaces for biotech patent attorneys to discuss important legal developments. To learn more about this event or register, visit the BIO IPCC page.
Amelia Feulner Baur, PhD to participate in the aba's 33rd annual intellectual property law conference
Founding Partner Amelia Feulner Baur, PhD,will participate in the ABA’s IPL Conference, April 18-20, 2018, in Arlington, Virginia. Speaking in the specialty session titled “Growing Your Start-Up IP Practice,” Amelia will join others in in discussing the issues and challenges firms face in establishing and growing a solo or small firm in the intellectual property field. For more information about this event, or to register, visit the ABA Conference page.
Rebecca b. scarr, phd and amelia feulner baur, phd present upcoming strafford seminar
Amelia Feulner Baur, PhD and Rebecca B. Scarr, PhD will speak at an upcoming live webinar “Double Patenting: Defeating Double Patenting Rejections and Avoiding Terminal Disclaimers” scheduled for Thursday, June 21, at 1:00 pm. The program will provide guidance to patent counsel in understanding PTA possibilities and double patenting, particularly given a desire not to lose PTA in an earlier issued patent. The panel will analyze recent court treatment and offer best practices to defeat double patenting rejections and avoid terminal disclaimers, and if a terminal disclaimer must be filed, some specific language to consider. Because of your affiliation with our firm, you may register for this webinar for free (the first 10 registrants) or for a discounted fee of 50% of cost. For CLE credit, the provider charges an additional fee. To take advantage of our discounted registration fee, please use the code: ZDFCT when the program becomes available on the Strafford website or email Amelia or Rebecca.
McNeill Baur Welcomes Two New Members
Hojung Cho, PhD, Counsel
Hojung Cho, PhD joins the life science patent prosecution and counseling team at McNeill Baur. Hojung represents clients in the biotechnology, pharmaceutical, chemical, and therapeutic device fields. She has a special interest in clients with multidisciplinary inventions with both biotechnology and device elements. Her strong legal and scientific training allow for a full range of IP services, including preparing and prosecuting U.S. patent applications, coordinating global patent portfolio management, and assisting with IP landscape and freedom-to-operate analyses, enforceability, non-infringement, and invalidity opinions, and IP due diligence for licensing, and mergers and acquisitions. Hojung’s deep scientific experience includes diagnostic and detection devices, biomarkers, biosensors, biochemical assays, microfluidics, bioMEMS, lab-on-a-chip applications of micro/nanotechnology, nanoparticles, fluorescence imaging, immunostaining, recombinant microorganisms, nucleic acid and protein technologies, cell culture platform, cell cryopreservation, tissue engineering, immunotherapy, cellular therapy, stem cells, antibiotic treatment, infectious diseases, metabolic engineering, biofuels, biomaterials, polymers, catalysts, and programmed therapeutic devices. We are pleased to have Hojung join the firm.
Catherine Van Houten, Practice Manager
Catherine Van Houten joins the administrative team at McNeill Baur as a Practice Manager with over 30 years of IP support experience, including 18 years in management roles with increasing levels of responsibility. Cathy is well-recognized for her knowledge and leadership ability. She speaks and teaches frequently on patent firm administration. Cathy creates course content and teaches for the Patent Resources Group Seminar Patent Administration: A Foundation for Success. Cathy also regularly speaks at the Annual Conference for Senior Patent Administrators, sponsored each fall in London by the Management Forum. As the firm’s Practice Manager, she provides firm-wide leadership with recruiting and training, new matter and new client processes, docketing, marketing, and other practice management activities. We are delighted to have Cathy join the firm.
Amelia Feulner Baur, PhD Presents Strafford Seminar on Indefiniteness in Chemical and Biotech Patent Claims
Amelia Feulner Baur, PhD, will speak in an upcoming live webinar “Sect. 112 Indefiniteness in Chemical and Biotech Patent Claims” scheduled for February 14, 2018, 1:00 – 2:30 pm EST. The panel includes Thomas Irving and Amanda Murphy, PhD from Finnegan. The program will provide guidance to patent counsel on the impact of recent Federal Circuit and PTAB case law on daily patent practice. Because of your affiliation with our firm, you may register for this webinar for free (the first 10 registrants) or for a discounted fee of 50% of cost. For CLE credit, the provider charges an additional fee. To take advantage of our discounted registration fee, please register at this link using the code: ZDFCT.
McNeill Baur Partners Author and Speak on Double Patenting
Elizabeth Doherty, PhD and Amelia Feulner Baur, PhD Author Article for Landslide Magazine
Elizabeth Doherty, PhD and Amelia Feulner Baur, PhD have authored an article on obviousness-type double patenting published in the January 2018 edition of the American Bar Association’s Landslide magazine. The article reviews recent Federal Circuit cases illustrating key issues that patent applicants who want to maximize the patent term should keep in mind, the types of patents in which double patenting could risk loss of patent term extension, and how restriction requirements during prosecution could guard against this. Please follow this link to read this article.
Rebecca B. Scarr, PhD and Amelia Feulner Baur, PhD Present Upcoming Strafford Seminar
Amelia Feulner Baur, PhD and Rebecca B. Scarr, PhD will speak at an upcoming live webinar “Double Patenting: Defeating Double Patenting Rejections and Avoiding Terminal Disclaimers” scheduled for Thursday, April 26, 2018, 1:00 – 2:30 pm EDT. The program will provide guidance to patent counsel in understanding PTA possibilities and double patenting, particularly given a desire not to lose PTA in an earlier issued patent. The panel will analyze recent court treatment and offer best practices to defeat double patenting rejections and avoid terminal disclaimers, and if a terminal disclaimer must be filed, some specific language to consider. Because of your affiliation with our firm, you may register for this webinar for free (the first 10 registrants) or for a discounted fee of 50% of cost. For CLE credit, the provider charges an additional fee. To take advantage of our discounted registration fee, please use the code: ZDFCT when the program becomes available on the Strafford website or email Amelia or Rebecca.
McNeill Baur Partner Rebecca M. McNeill Elected to Boston Patent Law Association Board of Governors
Founding partner Rebecca M. McNeill has been elected to the Board of Governors of the Boston Patent Law Association (BPLA) along with Monica Grewal from WilmerHale, Joshua M. Dalton from Morgan Lewis, and Rachel L. Emsley from Finnegan. Rebecca has served in leadership roles at the BPLA since 2013, where she has served as a co-chair of the Biotechnology Committee and the Chemical Patent Practice Committee. While serving in these roles at BPLA, Rebecca has led events on topics including IPRs in the biotech and pharma sector, the differences between US and European patent prosecution, the interplay between Hatch-Waxman litigation and PTAB proceedings, and double patenting.
BPLA serves as one of the country’s preeminent voluntary bar associations focused on intellectual property. BPLA’s mission is to provide educational programs and a forum for the interchange of ideas and information concerning patent, trademark, and copyright laws. BPLA also comments on rules and legislation affecting the profession.
McNeill Baur Partner Amelia Feulner Baur, PhD Presents Strafford Seminars
Amelia Feulner Baur, PhD , will speak in an upcoming live webinar “ Strategic use of Patent Reissue: Whether and When to Pursue a Reissue Application ” scheduled for January 18, 2018, 1:00 – 2:30 pm EST. The panel includes Thomas Irving and Jill MacAlpine from Finnegan. The program will provide an in-depth review of the pros and cons of using reissue, and best practices on the strategic use of patent reissue to correct errors. Because of your affiliation with our firm, you are able to register for this webinar for free (the first 10 registrants) or for a discounted fee of 50% of cost. For CLE credit, the provider charges an additional fee. To take advantage of our discounted registration fee, please be sure to register at this link using the code: ZDFCT.
On November 16, 2017, Amelia Feulner Baur, Thomas Irving, and Amanda Murphy from Finnegan presented a Strafford webinar on “Overcoming §103 Rejections for Biotech and Chemical Patents: Recent Decisions and USPTO Guidance.” A review of recent judicial and PTAB case law and insights to address §103 rejections was covered. The recorded event is now available.
McNeill Baur Supports Science Education through Corporate Sponsorships
For the second year, McNeill Baur PLLC’s Massachusetts Office, led by Rebecca M. McNeill , is making significant sponsorships to the Museum of Science, Boston and the BioBuilder Educational Foundation Apprenticeship Challenge. “Science serves as the foundation for our practice and drives many organizations in the Boston area. We want to ensure all young people have access to the best science opportunities Boston has to offer.” says firm founder Rebecca McNeill.
McNeill Baur’s sponsorship to the Museum of Science funds field trips for local students. Last year, 735 students from high-need communities were able to visit the Museum of Science using our sponsorship funds to pay for admission and bus transportation. A school field trip to the Museum of Science allows educators to provide authentic, hands-on experiences empowering all students in science learning.
McNeill Baur also continues its support of the BioBuilder Educational Foundation’s lab readiness program to prepare local high school students with laboratory and professional skills for summer internships in companies and universities in our community. In 2017, Rebecca had the opportunity to meet with impressive and articulate high school students engaged in the program and hear about their research ideas and new skills. For our Boston-area clients and friends, if you would consider hosting a summer intern, please let us know and we can help you make connections for summer 2018.
LMG Life Sciences Names McNeill Baur its 2017 IP Firm to Watch
Recognizing our focus on life science patent prosecution and counseling, LMG Life Sciences named McNeill Baur as the 2017 Intellectual Property Firm to Watch. On September 13th, lawyers from across the US and Canada gathered to celebrate the annual LMG Life Sciences Awards. The awards recognized the year’s top firms and legal professionals operating in the life science market. “We feel so honored to receive this distinguished award and receive this recognition,” says firm founder Amelia Feulner Baur, PhD. Founder Rebecca M. McNeill adds “We particularly appreciate our talented and committed attorneys and staff who serve our clients and make this firm such a great place to work.”
LMG Life Sciences Names Three McNeill Baur Partners LMG Life Science Stars
LMG Life Sciences recognized Rebecca M. McNeill, Amelia Feulner Baur, PhD, and Mary R. Henninger, PhD individually as LMG Life Science Stars, and further recommended McNeill Baur in two practice area categories: Patent Prosecution and Patent Strategy & Management. LMG Life Sciences ranks law firms that specialize in life science legal work, including intellectual property, regulatory, finance & transactional, and non-IP litigation and enforcement. In addition to reviewing public information, LMG Life Sciences spoke to clients and leading lawyers to help inform their research process. The publication conducted nearly 1000 interviews and reviewed surveys completed by partners active in the market.
McNeill Baur Sponsors 2017 BIO IPCC Fall Conference
McNeill Baur will partner with BIO in sponsoring the IP Counsels Committee Conference (IPCC) on November 13-15, 2017 in Annapolis, Maryland. Amelia Feulner Baur, PhD and Mary R. Henninger, PhD will attend the conference on behalf of the firm. Founder Amelia Feulner Baur, PhD will introduce keynote speaker The Honorable Kathleen O’Malley, United States Court of Appeals, Federal Circuit. To learn more about this event or register, visit the BIO IPCC page.
McNeill Baur Certified by WBENC as a Women’s Business Enterprise
The Women’s Business Enterprise National Council (WBENC) has certified McNeill Baur as a Women’s Business Enterprise (WBE). “As a 100% woman-owned specialty IP firm, our employees, clients, and colleagues recognize our unique position. Nevertheless, we greatly appreciate this formal recognition from WBENC,” says firm partner Mary R. Henninger, PhD, who participated in the certification process. WBENC certifies women-owned, operated, and controlled businesses, and is widely recognized by public, private, non-profit, and governmental entities.
McNeill Baur Sponsoring MIP International Women’s Leadership Forum
McNeill Baur PLLC has sponsored the Managing Intellectual Property (MIP) International Women’s Leadership Forum that will be held in New York City on June 8, 2017. Founding partners Amelia Feulner Baur, PhD and Rebecca M. McNeill are speaking and moderating a panel discussion, respectively, on licensing agreements and royalties, including pitfalls to avoid in licensing agreements, how to negotiate a license agreement, important factors in joint development agreements, and due diligence steps to take when representing the licensee or licensor in an agreement. The conference is free for in-house counsel and offers 5 hours of NY CLE credit. Please register here.
McNeill Baur Named 2017 IP Star By Managing Intellectual Property (MIP)
McNeill Baur PLLC has been recognized by Managing Intellectual Property (MIP) as a 2017 IP Star for intellectual property law and has awarded Rebecca M. McNeill, Amelia Feulner Baur, PhD, and Mary R. Henninger, PhD with individual IP Stars. McNeill Baur has also been named as one of five “Firm to Watch” by shortlisting the firm for an award that was given in March. “We are honored to receive this recognition from such a prestigious and recognized organization,” firm founder Amelia Feulner Baur, PhD, says. Founder Rebecca M. McNeill adds “We are especially grateful for our talented and dedicated staff, as well as our loyal clients for entrusting us with their important patent matters.”
MIP is a leading source of news and analysis on all intellectual property developments worldwide. Annually, MIP conducts its IP Survey, contacting global practitioners (including in-house counsel and law firm attorneys) across 80 jurisdictions to identify and rank leading law firms in the IP field.
McNeill Baur Welcomes Two New Attorneys, Expanding Pharma Focus
McNeill Baur is proud to welcome Deborah M. Herzfeld as a counsel. Deb focuses on client counseling, worldwide patent prosecution, and portfolio management, with an emphasis on pharmaceutical life cycles and medical devices. She also has extensive experience with cosmetic, biofuel, polymer, catalyst, and petroleum-based technologies. Prior to joining McNeill Baur, Deb was an attorney with Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP, having practiced with that firm for more than 15 years
Victoria S. Lee joins McNeill Baur as an associate, with a focus on biotechnology patent prosecution and counseling. In addition to prior experience in prosecution and counseling, Vicki has over six years of pharmaceutical litigation experience before district courts and the Federal Circuit. Vicki was recognized in 2014 and 2015 as a “Rising Star” in Intellectual Property Litigation by SuperLawyers. Vicki has also been named as an inventor on an issued patent. Previously, Vicki was an associate with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
McNeill Baur Partner Mary Henninger Named US Life Science Star by LMG Life Sciences
McNeill Baur partner Mary Henninger, PhD was named a US Life Science Star for intellectual property in the 2016 edition of LMG Life Sciences. LMG Life Sciences is a publication highlighting firms and individuals in the United States, Canada, and Europe specializing in one or more practice areas—regulatory, intellectual property, finance and transactional, and non-IP litigation and enforcement.
McNeill Baur PLLC InVESTS in the next generation of inventors
McNeill Baur PLLC’s Massachusetts Office, led by Rebecca M. McNeill, is making significant corporate sponsorships to the Museum of Science, Boston and the BioBuilder Educational Foundation Apprenticeship Challenge. “We want to thank our clients and inventors this holiday season by providing opportunities for the next generation of inventors in our community to become engaged and passionate about science and technology” says firm cofounder Rebecca McNeill. “In addition to training new scientists, we strengthen our community when citizens understand the basic principles of research and its value in improving our health, quality of life, and economic growth.”
The Museum of Science, Boston has received recognition in the greater Boston area as a leader in promoting an active citizenship informed by the world of science and technology, as well as encouraging young people of all backgrounds to explore and develop their interests in understanding the natural and human-made world. “McNeill Baur is partnering with the Museum of Science, Boston, to provide field trips to the Museum for 200 students from high-need communities, including admissions fees and bus transportation. The firm’s generous support will provide these students with an authentic, hands-on experience that empowers them to be engaged science learners” says Jacob Barry, Senior Corporate Relations Office at the Museum of Science, Boston.
The BioBuilder Educational Foundation, in partnership with the Massachusetts Life Sciences Center, launched a lab readiness program to prepare local students with both the laboratory and professional skills that will prepare them for internship opportunities, and eventual careers, with local life science companies and research institutions. Teachers from Boston and Cambridge public high schools recommended their most ambitious students who could truly benefit from this opportunity. The training, led by BioBuilder and hosted at MIT, exposes students to cutting-edge science, foundational engineering practice, and opportunities for meaningful work and professional advancement. BioBuilder founder and Instructor in the MIT Department of Biological Engineering, Dr. Natalie Kuldell explains: “The importance of STEM programs like this one is evident in the spirit of enthusiasm, curiosity, and wonder shown by the students—encouraging them to become the next generation of scientists and engineers. We thank McNeill Baur for joining last year's funders MIT Department of Biological Engineering and the Massachusetts Life Sciences Center in providing support for the BioBuilder Apprenticeship Challenge.”
At McNeill Baur PLLC, we love science!
McNeill Baur PLLC Recommended by Managing Intellectual Property
McNeill Baur PLLC has been recognized as an IP Star by Managing Intellectual Property (MIP). In awarding the firm with an IP Star, MIP focused on the firm’s practice in USPTO contentious proceedings, prosecution, portfolio strategy and management, and licensing agreements. It described the firm’s use of an IPR to defend a biotechnology client against a potentially costly litigation and our prosecution and counseling for a publicly-traded company’s gene therapy patent portfolio.
MIP is a leading source of news and analysis on all intellectual property developments worldwide. Annually, MIP conducts its IP Survey, contacting global practitioners (including in-house counsel and law firm attorneys) across 80 jurisdictions to identify and rank leading law firms in the IP field.
Three McNeill Baur Partners Named as IP Stars
Managing Intellectual Property announced Rebecca M. McNeill, Amelia Feulner Baur, PhD, and Mary Henninger, PhD as IP Stars. Firm co-founder Rebecca M. McNeill is an experienced patent prosecutor and portfolio manager, and has recently been engaged in the strategic use of an IPR to defend a biotechnology client against a potentially costly litigation, after the company received a patent infringement warning letter from a competitor. Rebecca’s IP Star ranking can be found at this link.
Fellow co-founder Amelia Feulner Baur, PhD, handles the patent prosecution, strategy, counseling, freedom-to-operate, and transactional agreements on behalf of large and small life science companies. Amelia prides herself on providing personalized representation in precision medicine and biologics patent law. Amelia’s IP Star ranking can be found at this link.
Mary Henninger, PhD, recently provided two key freedom to operate analyses on behalf of a pharmaceutical client, helping them move away from a risky licensing deal with one party, and avoiding potential litigation with a competitor. Mary is a litigator turned prosecutor, who prepares your patents to stand up in court. Mary’s IP Star ranking can be found at this link.
McNeill Baur Welcomes THREE New Members
McNeill Baur is proud to welcome three new members. Rachel Ashton joins our firm as a Patent Prosecution Coordinator with nearly 20 years in intellectual property law including experience with both US and foreign patent filings and prosecution. Prior to joining McNeill Baur, Rachel was employed for 15 years Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
Deborah Barragan joins our firm as a Patent Prosecution Coordinator with 17 years of experience in intellectual property law including experience with both US and foreign patent filings and prosecution. Deborah also holds an associate degree in graphic design and assists the attorneys with patent drawings. Prior to joining McNeill Baur, Deborah was a Senior Patent Administrator with the Quine Intellectual Property Law Group.
McNeill Baur is also proud to welcome Jeanne Laszewski, CPA, as an Accounting Specialist. Jeanne is a Certified Public Accountant and brings 20 years of accounting experience to McNeill Baur. Prior to joining McNeill Baur, she was a senior accountant at LCC International Inc. (LCCI).
Amelia Feulner Baur, PhD, Speaking with USPTO’s Raul Tamayo on Life Science Subject Matter Eligibility (35 USC § 101)
Amelia Feulner Baur, PhD, will speak in an upcoming live webinar, “USPTO's Subject Matter Eligibility: The Dos and Don'ts in 2016 and Beyond" scheduled for Tuesday, November 15, 12:00pm-2:00pm EDT. The panel includes Raul Tamayo, Senior Legal Advisor at the United States Patent and Trademark Office and Mark Nelson, Partner Dentons US LLP. The panel will examine recent developments in case law and patent office practice, as well as prosecution and litigation strategies for defending against 101 challenge and using 101 offensively. After the presentation, panel members will engage in a live question and answer session with participants to answer questions about these important issues directly. Because of your affiliation with our firm, you are able to register for this webinar for free (the first 30 registrants) or for a discounted fee of $25. For CLE credit, the provider charges an additional fee of $49. To take advantage of our discounted registration fee, please be sure to register at this link.
Factors Favoring Early Settlement of Post-Grant Proceedings published in Landslide Magazine
Mary R. Henninger, PhD, and Rebecca M. McNeill published an article considering the strong public policies favoring settlement of post-grant proceedings (PGPs) before the Patent Trial and Appeal Board (PTAB). While settlement can offer a compromise that reduces costs for all parties, conserves judicial and private resources, and promotes good will, additional factors pressure patent owners to reach settlement earlier in PGPs. By waiting to settle until a later stage of a PGP, patent owners take multiple risks that can affect the value and scope of the patent at issue. By waiting until after oral hearing to settle a PGP, a patent owner risks that the PTAB will deny a motion to terminate the proceedings in favor of issuing a final written decision of unpatentability. Furthermore, statements a patent owner makes on the record regarding claim construction or the prior art before termination of a PGP may amount to prosecution disclaimer. To read our article, please click here.
USPTO Launches Patents 4 Patients, Giving Cancer Immunotherapy Applications Special Status
Recognizing the importance of cancer immunotherapy treatment and in concert with the White House national $1 billion initiative to achieve ten years’ worth of cancer research in the next five years (“National Cancer Moonshot”), the USPTO will advance applications containing at least one claim to a method of treating cancer using immunotherapy. In order to receive this benefit, applicants must file a grantable petition to make special under a new pilot program. The USPTO estimates that these applications will complete examination within twelve months of the grant of special status. Similar to Track I applications, the special status contains claim number restrictions—an application under this program must not contain multiple dependent claims, more than three independent claims, or more than twenty total claims.
The USPTO has made this program available at more time points than a Track I request. Applicants can apply for this program before the USPTO gives any notice regarding a first office action (including a restriction requirement) or at the time of filing an RCE. Additionally, if the cancer immunotherapy is the subject of an investigational new drug (IND) application, the petition may be filed at any time prior to an appeal or final rejection.
The applications must contain at least one claim encompassing a method of ameliorating, treating, or preventing a malignancy in a human subject wherein the steps of the method assist or boost the immune system in eradicating cancerous cells. This program offers substantial prosecution cost savings for applicants pursuing immunotherapy methods compared to Track I prosecution. The USPTO does not require additional fees to participate in this program.
For more information, contact us or review the USPTO Federal Register Notice.
McNeill Baur and three partners recognized as IP Stars by Managing Intellectual Property
McNeill Baur PLLC has been recognized as an IP Star by Managing Intellectual Property (MIP). In awarding the firm with an IP Star, MIP focused on the firm’s practice in USPTO contentious proceedings, prosecution, portfolio strategy and management, and licensing agreements. It described the firm’s use of an IPR to defend a biotechnology client against a potentially costly litigation and our prosecution and counseling for a publicly-traded company’s gene therapy patent portfolio. And Rebecca M. McNeill, Amelia Feulner Baur, PhD, and Mary R. Henninger, PhD, have been recognized individually as IP Stars by Managing Intellectual Property.
Firm founder Amelia Feulner Baur, PhD, extended her warm thanks to MIP for recognizing the firm and founder Rebecca M. McNeill extended the thanks to the firm’s very talented attorneys and staff.
McNeill Baur PLLC named one of five “Firms to Watch” by Managing Intellectual Property
McNeill Baur PLLC has been named on the shortlist of nominees for the 2016 Managing Intellectual Property “Firm to Watch” Award. “As one of only five firms nominated for ‘Firm to Watch,’ we are greatly honored to receive this recognition,” firm founder Rebecca M. McNeill says. Founder Amelia Feulner Baur, PhD agrees: “We feel especially grateful to our talented and dedicated staff and attorneys for living our firm motto: responsive, flexible, experienced, and to our clients for entrusting us with their most important intellectual property work.”
McNeill Baur Welcomes Four New Members
Our growth continues as we welcome new Associate Adam M. Breier, PhD, new Patent Prosecution Coordinators, Charity K. Dunn and Jennifer L. Arguelles, and Operations Manager Susan L. Statz.
McNeill Baur is proud to welcome Adam M. Breier as an Associate in our California office. Adam focuses on patent prosecution, client counseling, and PTAB proceedings in the biotechnology and pharmaceutical areas. He brings 12 years of research experience in molecular biology, genomics, and chemistry and 7 years of patent experience from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to our team. Adam’s PhD in Biophysics from University of California, Berkeley, and law degree from Stanford Law School bring deep scientific and legal understandings to his patent prosecution and counseling practice. Adam has a special interest in subject matter including biochemical and biophysical analytical compositions, methods, and apparatuses; polymer chemistry; engineered or recombinant DNA, RNA, and proteins; and genetically modified cells.
We are also proud to announce the addition of two new Patent Prosecution Coordinators and an Operations Manager to the firm.
Charity K. Dunn has a background of 13 years in intellectual property law, and most recently had her own legal support service company providing patent prosecution assistance and marketing for small law firms. Before opening her own business, she was a Patent Prosecution Secretary at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
Jennifer L. Arguelles joins our firm with over 20 years in intellectual property law. Prior to joining McNeill Baur, she was a Patent Legal Secretary at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, and served as a senior Docket Specialist for 8 years while at Finnegan.
Susan L. Statz joins our firm as Operations Manager with over 15 years of IP law firm management experience, most recently running her own legal support service company providing docketing, paralegal, bookkeeping and consulting services to small IP law firms. Prior to opening her own business, Susan spent 13 years at Squire Patton Boggs (formerly Patton Boggs) as the National Director of Records Management & IP. She also served as Business Manager for a small boutique IP law firm. Susan has a Bachelors degree with a double major in Accounting and Business Administration. In addition to other responsibilities, Susan manages recruiting and the firm’s interactions with foreign counsel and other vendors.
In addition to the founding partners Rebecca M. McNeill and Amelia Feulner Baur, PhD, the firm’s partners also include Elizabeth A. Doherty, PhD, Mary Henninger, PhD, and Rebecca B. Scarr, PhD. Additional professionals of McNeill Baur include counsel Lara C. Kelley, technical specialist Kate Prybylowski, PhD, and patent prosecution coordinators Juliana Merlino, and Sarah Forsse. McNeill Baur is a responsive, flexible, and experienced intellectual property law firm serving US and international clients from publicly-traded companies to startups.
McNeill Baur Attorneys Coauthor Article “Navigating the Limitations on Discovery in AIA Post-Grant Proceedings”
McNeill Baur attorneys Mary R. Henninger, Rebecca M. McNeill, Amelia Feulner Baur, PhD, and Lara C. Kelley, along with attorneys from Finnegan, Henderson, Farabow, Garret, & Dunner, LLP and Paul Hastings LLP, coauthored an article published in Buffalo Intellectual Property Law Journal on December 3, 2015, that examines the limits, timelines, and procedures for discovery in the USPTO’s Post-Grant Proceedings (PGPs). The America Invents Act instituted PGPs as cost-effective and time-saving alternatives to litigation. But to achieve those goals, the scope of discovery permitted in PGPs is significantly limited versus that available in district court litigation under the Federal Rules of Civil Procedure. The authors discuss the difference between mandatory discovery, routine discovery, and additional discovery; they examine the five Garmin factors considered by the Patent Trial and Appeal Board (PTAB) when deciding a motion for additional discovery; and they provide summaries and analyses of PTAB decisions granting and denying motions for additional discovery. The authors also explain how motions for additional discovery should be timely, well-supported, clear, and narrowly focused to the discovery of non-public information that directly relates to an issue in the PGP and should not seek information already available through routine discovery.
Rebecca M. McNeill receives AV Preeminent® Peer Review Rating
Founding partner Rebecca M. McNeill has recently been ranked by Martindale-Hubble® as an AV Preeminent® Attorney, receiving a score of 4.9 out of 5.0. During the ranking process, Rebecca was described as protecting inventions in a “commercially viable and strategic way,” having “excellent attention to detail and quality of work,” and “expressing herself with great poise and a casual eloquence that quickly wins—and maintains—the trust of those she works with.”
Surveying attorneys in similar practice areas, Martindale-Hubble® ranks lawyers on their ethical standards, as well as their legal knowledge, analytical capabilities, judgment, communication ability, and legal experience.
Amelia Feulner Baur, PhD, Speaks on Patentable Subject Matter in The Netherlands in November 2015
McNeill Baur founding partner Amelia Feulner Baur, PhD lectured on patentable subject matter to about 125 members of the Institute of Professional Representatives before the European Patent Office (epi) this November. During the three-hour lecture, Amelia discussed current case law relating to natural products, natural laws, and abstract ideas, and presented a workshop on claim drafting.
Amelia also provides thought leadership on this evolving issue as a member of the American Bar Association’s (ABA’s) task force on patentable subject matter and legislative considerations.
Elizabeth A. Doherty, PhD speaks on due diligence in Paris in September 2015
McNeill Baur partner Elizabeth A. Doherty, PhD provided a lecture on due diligence for the Association Française des Spécialistes en Propriété Industrielle de l’Industrie (ASPI). ASPI is a group of French patent attorneys and industrial property counsels mainly from the in-house sector.
Liz traveled to Paris in September 2015 to present a half-day seminar to the ASPI on conducting patent due diligence. The emphasis of the seminar was on conducting a patent due diligence efficiently while also keeping track of sensitive information and budgetary considerations. Liz addressed organizing a team, making use of as much public information as possible, ways to handle sensitive, confidential, and privileged information, and issues that may affect the value of a deal. Liz particularly pointed out United States legal issues that may have a large impact on value. The seminar was held in English with discussions following in French.
Elizabeth A. Doherty, PhD and Rebecca M. McNeill coauthor paper on Patent Term Adjustment
Partners Elizabeth A. Doherty, PhD and Rebecca M. McNeill coauthored a paper in the May 2015 issue of Pharmaceutical Patent Analyst detailing the USPTO’s new rules on patent term adjustment in the wake of the Novartis v. Lee Federal Circuit decision of 2014. The article explains how the B delay period, for patent applications pending for more than 3 years, will be calculated under the new USPTO rules and also how the filing of a Request for Continued Examination during prosecution will impact patent term adjustment.
Rebecca McNeill to speak in webinar on “Maximizing Prosecution Opportunities in Europe”
Rebecca M. McNeill
Rebecca M. McNeill will speak in an upcoming Strafford live webinar, “Maximizing Patent Prosecution Opportunities in Europe: Tactics for Counsel when Drafting US-Origin Applications” scheduled for Thursday, August 6, 1:00pm-2:30pm EDT.
Our panel will provide guidance for patent counsel in drafting U.S.-origin patent applications to maximize prosecution opportunities in both the U.S. and Europe. After discussing each area, the panel will offer best practices for U.S. patent application drafters to protect inventions in Europe without sacrificing U.S. strategy.
After the presentation, panel members will engage in a live question and answer session with participants to answer questions about these important issues directly.
Because of your affiliation with our firm, you are able to register for this webinar at a special rate. To take advantage of our 50% discounted registration fee, please be sure to register at this link: