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Janet M. McNicholas, Ph.D.

Partner
+1.650.798.6707
Fax +1.650.798.6701
+1.312.807.4263
Fax +1.312.827.8000

Janet McNicholas is particularly noted for her patent-related achievements in the areas of biotechnology, pharmaceutical products, and medical products. She serves as patent counsel to biotechnology and pharmaceutical companies, including start-up and emerging growth companies financed by private equity and venture capital investors. She is a frequent speaker at national and international conferences on patent matters relating to recombinant biologicals, therapeutic antibodies, bioprocessing/bioproduction, biosimilars/follow-on biologics, pharmaceuticals, Hatch-Waxman Act, generic drug development, medical devices, and partnering/outsourcing.

Dr. McNicholas advises clients in the development, management, and enforcement of worldwide patent portfolios. She writes and prosecutes patent applications for a broad range of life science technologies, has an experienced litigation and opposition practice, and advises clients in licensing and agreement matters. Her practice regularly includes conducting patentability, freedom-to-operate, infringement and validity assessments; evaluating intellectual property portfolios in connection with venture capital and private equity financings, collaborations and/or partnering deals; and mining both developing and mature patent portfolios for opportunities to maximize value.

Professional Background

Dr. McNicholas' experience includes more than 25 years of practice as a patent attorney, both in law firm practice and as in-house patent counsel. Prior to practicing law, she conducted research in immunology, molecular biology, biochemistry, and genetics at the University of Illinois as a pre-doctoral student and then at Stanford University and at the California Institute of Technology as a post-doctoral fellow of the Arthritis Foundation.

Professional/Civic Activities

  • American Bar Association (ABA)
  • American Intellectual Property Law Association (AIPLA)
  • Chinese American Biopharmaceutical Society (CABS)
  • Forum for Women Entrepreneurs & Executives (Watermark)
  • Intellectual Property Law Association of Chicago (IPLAC)
  • San Francisco Intellectual Property Law Association (SFIPLA)
  • Silicon Valley Indian Professionals Association (SIPA)
  • TiE

Speaking Engagements

Dr. McNicholas recently has lectured in scientific, business and legal conferences in Bangalore, Beijing, Boston, Hyderabad, Kuala Lampur, Mumbai, New Delhi, New York, Phoenix, San Diego, Shanghai, Singapore, Tokyo, and Washington, D.C.