News

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.

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.

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 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:

Maximizing Patent Prosecution Opportunities in Europe: Tactics for Counsel when Drafting US-Origin Applications