Jill MacAlpine, Ph.D., leader of the firm’s patent office practice, focuses on strategic counseling, prosecution, and patent litigation, primarily in the chemical and pharmaceutical areas. With over 15 years of experience in intellectual property law, she spends a significant portion of her time involved in pre-litigation analyses, due diligence investigations, opinion preparation, and strategic client counseling, including patent portfolio management, Orange Book listings of patents covering FDA-approved drugs, and patent term extensions.
As a registered patent attorney, Jill has extensive experience in handling a wide variety of patent matters before the U.S. Patent and Trademark Office (USPTO), including post-grant proceedings specifically inter partes reviews (IPRs), appeals, and oral hearings at the Patent Trial and Appeal Board (PTAB); drafting and prosecuting patent applications; reissue and reexamination proceedings; and interferences.
In addition to counseling and prosecution, Jill’s practice includes patent litigation, in particular Abbreviated New Drug Application (ANDA) cases arising under the Hatch-Waxman Act. She has experience in all aspects of patent litigation at both U.S. district court and appellate levels, including managing day-to-day activities during every phase of litigation, conducting offensive and defensive discovery, drafting dispositive motions, and taking and defending depositions. Jill has been extensively involved in matters procuring, assessing and/or defending patent rights related to pharmaceutical drugs, including Farxiga®, Brilinta®, Lovenox®, Taxotere®, Allegra®, Rimonabant,® Nuvigil®, and Gabitril®, and other products such as Cerament.
Jill has handled matters involving a wide range of technologies, many having complex issues concerning solid state forms (polymorphs), including pharmaceuticals, small molecule chemistry, cosmetics, food science, bone substitutes, polymers, and drug delivery systems. She also has significant experience in organic chemistry. Jill earned her Ph.D. in organic chemistry at the University of British Columbia, where she studied porphyrins and porphyrin derivatives for use as pharmaceutical products in photodynamic therapy.
Jill is listed in LMG Life Sciences as an Intellectual Property: Life Sciences Star. She has written and lectured on diverse patent law issues and was a permanent faculty member of the Patent Resource Group’s “Chemical Patent Practice,” a comprehensive U.S. chemical patent law course taught multiple times a year.
More Legal and Business Bylines From Jill K. MacAlpine, Ph.D.
- “Show More of You”: Amgen v. Sandoz, Battling it Out on Amgen’s Otezla® Drug - (Posted On Tuesday, January 18, 2022)
- A Mixed Bag: Some Claims Found Unpatentable but Others Are Patentable - (Posted On Monday, November 15, 2021)
- Federal Circuit Crystallizes BMS’ Apixaban District Court Win - (Posted On Monday, September 27, 2021)
- A Look at AIA § 3(n)(2): Part Two of a Two-Part Series on AIA § 3(n) Effective Filing Date Provisions - (Posted On Friday, September 24, 2021)
- None of Us Saw Them Stop the PTA Giveaway - (Posted On Friday, September 17, 2021)
- Pay the (PTO) Piper: Correct Erroneously Underpaid Maintenance Fees to Avoid Inequitable Conduct Challenges - (Posted On Friday, August 27, 2021)
- AIA § 3(n) Effective Filing Date Provisions Part I: A Look at PGR Eligibility - (Posted On Friday, July 16, 2021)
- Ready, Set, Go: Crystalize Your Thinking - (Posted On Thursday, July 01, 2021)
- Do What You Learned in Kindergarten: Fight Fair and Play by the Rules—Avoiding Litigation Misconduct - (Posted On Friday, June 25, 2021)
- How to Get “Boxed-In” and Blow a Judgment You Received: Sleeping in the Bed You Made - (Posted On Tuesday, June 01, 2021)