Deborah M. Herzfeld

Deb provides the catalyst to synthesize a valuable patent portfolio from your chemical inventions

Deb Herzfeld’s practice focuses on client counseling and 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.

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.

Prior to joining McNeill Baur PLLC, Deb practiced as an attorney for over 15 years at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. Prior to Finnegan, Deb was a law clerk for the Honorable Christine O.C. Miller of the US Court of Federal Claims. While in law school, Deb gained patent prosecution and licensing experience as a student associate at the University of Virginia Patent Foundation, and received the Charles J. Frankel Award in Health Law upon graduation. Deb was promoted to partner at McNeill Baur in 2022.

Select Publications

“Adjusting for the New Normal: Thoughts on Enhancing the Possibilities of Success for the Patent Owner in an AIA Post-Grant Proceeding,” Buffalo Intellectual Property Law Review, Dec. 4, 2015 (coauthor).

“An Update on Unsuccessful Inter Partes Review Petitions,” Law360, May 28, 2015 (coauthor).

“3 Lessons from Unsuccessful Inter Partes Review Petitions,” Law360, April 22, 2015 (coauthor).

“Inside the New U.S. Patent Law,” SPIE Professional, Oct. 2013 (coauthor).

“Top Five Dangers for the AIA Unwary,” Landslide, May/June 2013 (coauthor).

“A Panacea for Inequitable Conduct Problems or Kingsdown Version 2.0?  The Therasense Decision and a Look into the Future of U.S. Patent Law Reform,” Virginia Journal of Law & Technology, Fall 2011 (coauthor).