For clients seeking patent protection in all areas of biotechnology and pharmaceuticals, Katherine L. Neville, Ph.D. delivers guidance to secure their inventions worldwide. She calls on her advanced studies in microbiology and immunology and over a decade of patent prosecution experience to advance their business goals. In addition to counseling clients in strategic management of worldwide patent rights, her extensive experience includes patent preparation, opinions, due diligence analyses for clients interested in partnering, and various patent proceedings, including interference, reexamination and opposition proceedings. Dr. Neville serves clients ranging from non-profit institutions to biotech start-ups to big pharma, and capably understands their diverse needs across a wide range of technologies.
Dr. Neville has been recognized in the 2016 Women Worth Watching list by Profiles in Diversity Journal, a list highlighting women who are using their influence to change their workplace, marketplace, and the world. She has been selected as one of the “World’s Leading Patent Practitioners” from 2013–2016 by Intellectual Asset Management (IAM) magazine. Since 2014, she was selected for inclusion in the Illinois Rising Stars® list, featuring outstanding young attorneys in the state. In recognition of her outstanding patent work in life sciences, Dr. Neville has been featured as a “Life Sciences Star” in the 2015 and 2016 editions of LMG Life Sciences. Additionally, Dr. Neville has been named an “IP Star” in Managing IP's IP Stars Survey (fka the World IP Handbook and Survey) since 2014.
- Responsible for worldwide prosecution for three FDA-approved drugs and numerous additional clinical candidates, including small molecules and biologics.
- Successfully obtained patent protection for next generation antibodies and performed FTO’s on potential antibody targets and indications for clients.
- Reliably guided client through freedom to operate analysis and patent application processes in their development of new vaccine therapies for pandemic influenza viruses.
Dr. Neville has skillfully worked on patent matters in diverse technologies, including:
- Antibody technology
- Growth factors
- Cell adhesion molecules
- Vaccine compositions
- Diagnostic and therapeutic methods
- Recombinant protein production
- Protein purification
- Transgenic animals
- Cell-based therapeutics
Background and Credentials
Dr. Neville has extensively prosecuted domestic and foreign patents, provided due diligence analyses, handled interference, reexamination and opposition proceedings, as well as given non-infringement, patentability, freedom-to-operate, and validity opinions.
She received her J.D., cum laude, from The John Marshall Law School.
Prior to joining the firm, Dr. Neville earned her Ph.D. from the Department of Microbiology and Immunology at Northwestern University Medical School. Her graduate work focused on experimental models of the autoimmune disease Multiple Sclerosis, specifically investigating potential therapeutic methods involved in the regulation of auto-reactive T cell function and their consequent effects on the progression of autoimmune disease. She received her B.S. in biochemistry from the University of Notre Dame.
- The John Marshall Law School (J.D.)
- Northwestern University (Ph.D.)
- University of Notre Dame (B.S.)
- U.S. Patent and Trademark Office
Publications and Presentations
Dr. Neville has published several articles in legal and peer-reviewed scientific journals and frequently presents CLE seminars on emerging topics in the biotech field, such as recent developments in case law as well as current trends at the US Patent and Trademark Office.
“Start-up Challenge 2.0,” Moderator, Women in Bio-Chicago, September 27, 2016.
- “'Signed, sealed, delivered': Pay-for-delay deals aren't all bad,” IPPro Life Sciences, April 6, 2016
- “Patent Eligibility from the Trenches: Practical Implications of the Supreme Court’s Mayo and Myriad Decisions,” 2014 BIO International Convention, San Diego, CA, June 2014.
- “Are 'pay for delay' payments anti-competitive or just another settlement agreement? The Supreme Court sets out criteria for determining whether reverse settlements violate antitrust law,” InsideCounsel, July 2, 2013.
- “Licensor or licensee, who bears the burden of proving infringement? The Supreme Court seeks to clarify the apparent discrepancy between one of its rulings and the Federal Circuit’s decision in Medtronic v. Boston Scientific,” InsideCounsel, June 4, 2013.
Click here to see additional Publications and Presentations.
Community and Professional Involvement
- Women in Bio (WIB)–Chicago Chapter, Former Chair, Member of Advisory Board
- Intellectual Property Law Association of Chicago (IPLAC)
Zymogenetics, Inc. v. Kirin Brewery Company, Limited*
U.S. Patent Office Board of Patent Appeals and Interferences
Case Type(s): Patent Interference
Area(s) of practice: Biotechnology