Rebecca B. Scarr, PhD

Rebecca B. Scarr, PhD
Partner
rebecca.scarr@mcneillbaur.com
O: 414-847-6401
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McNeill Baur PLLC                                       500 W. Silver Spring Drive
Suite K-200
Glendale, WI 53217

Rebecca B. Scarr, PhD, has more than 15 years of experience assisting clients with a broad range of intellectual property needs, including patent preparation and prosecution, coordination of worldwide patent strategies, portfolio management, and due diligence investigations. Rebecca works with pharmaceutical and biotechnology companies of all sizes, from early-stage start-ups to large, publicly-traded corporations, and helps her clients develop robust and appropriate portfolio strategies to meet their business goals and budgets. Rebecca also assists clients with investment- and initial public offering-related diligence, and works with venture capital firms and corporations to perform due diligence on new technology and target companies.

Rebecca has extensive worldwide portfolio management and patent prosecution experience, including wide filing strategies in many Paris Convention and Patent Cooperation Treaty countries. With a deep understanding of current US patent law and procedures, Rebecca helps her clients obtain broad coverage for their strategic assets while preserving patent term. Rebecca’s patent prosecution and due diligence experience covers a wide range of technologies, including chemistry, molecular biology, antibodies, proteins, nucleic acids, aptamers, diagnostics, plant genetics, and genetically-modified organisms.

Rebecca’s scientific background includes organic synthesis, biochemistry, and molecular biology. Rebecca majored in chemistry at MIT, where she worked on ribonucleotide phosphoramidite synthesis and oxime resin-based peptide synthesis. She earned an AM in chemistry from Harvard University, conducting research on cytosine-5-methyltransferases in Prof. Greg Verdine’s lab. After two years working as a research associate at Scriptgen Pharmaceuticals studying aptamer binding, Rebecca earned her PhD from Phillip Sharp’s lab at MIT, where her thesis focused on mRNA transcription. Prior to joining McNeill Baur PLLC, Rebecca spent five years at small IP boutique firms in Wisconsin and more than eight years at Finnegan, Henderson Farabow, Garrett & Dunner’s Palo Alto office.

Select Publications

“Attorney-Client Privilege in Patent Prosecution,” paper and presentation for AIPLA Webinar, June 2010.

“Intellectual Property Considerations,” presented as part of Nucleic Acid Therapeutics: Rationale, Approaches, Progress and Challenges, University of Wisconsin, Extension Services in Pharmacy, May 10-12, 2010.

“Privilege and Ethics Issues in Prosecution: The Common Interest Doctrine & Working with Inventors, Employees & Non-US Counsel,” paper and presentation for AIPLA 2008 Spring Meeting, Houston, TX (coauthor).

“Drafting and Prosecuting Enforceable Patents,” presented at Fitting the Pieces Part 2: Further Insight into FDA and Patent Law, Menlo Park, CA, September 6, 2007.

“Process Patent Protection: Section 337 Investigations and the Safe Harbor Defenses of § 271(g),” 337 Reporter, Summer Associate Edition – 2003: 19-23, 2004.

“PDCD2 is a negative regulator of HCF-1 (C1),” Oncogene 21: 5245, 2002 (coauthor).

“A novel 50-kilodalton fragment of host cell factor 1 (C1) and G(0) cells,” Mol. Cell. Biol. 20: 3567, 2000 (coauthor).

“DNA-dependant RNA polymerase from Enterobacter cloacae is closely relation to Escherichia coli,” Int. J. Biochem. Cell Biol. 29: 1485, 1997 (coauthor).

“Improved Synthesis and aminoacylation of p-nitrobenzophenone oxime polystyrene resin for solid-phase synthesis of protected peptides,” Pept. Res. 3: 238, 1990 (coauthor).

 

Admissions

California

Wisconsin

US Patent and Trademark Office

 

Education

Stanford Law School

JD, 2005

 

Massachusetts Institute of Technology

PhD, Biology, 2001

 

Harvard University

AM, Chemistry, 1993

 

Massachusetts Institute of Technology

BS, Chemistry, 1991

 

Select Speaking Engagements

Practising Law Institute: Advanced Patent Prosecution Workshop 2014: Claim Drafting & Amendment Writing, San Francisco, CA, August 18-19, 2014.

 

Practising Law Institute: Advanced Patent Prosecution Workshop 2013: Claim Drafting & Amendment Writing, San Francisco, CA, August 19-20, 2013.

 

University of Wisconsin – Madison Extension Services in Pharmacy, “Nucleic Acid Therapeutics: Rationale, Approaches, Progress and Challenges,” faculty member, May 2-4, 2011.

 

“Privilege and Ethics in Prosecution – Managing Attorney-Client Communications and Relationships,” presentation for AIPLA Webinar, June 2010.