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Janet M. McNicholas, Ph.D.  Partner
Palo Alto  +1.650.798.6707
Chicago  +1.312.807.4263
Fax +1.650.798.6701
Fax +1.312.827.8000
janet.mcnicholas@klgates.com Add to Outlook Contacts


Areas of Practice Professional Background Professional/Civic Activities Speaking Engagements Court Admissions Bar Admissions Education

Areas of Practice

Janet McNicholas is particularly noted for her 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. She is a frequent speaker at national and international conferences on intellectual property 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 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

During her more than 20 years of practice as a patent attorney and a corporate attorney, Dr. McNicholas headed the biotechnology patent practice at McAndrews, Held & Malloy, headed the Life Sciences Patent Group at Cooley Godward's Palo Alto office, and served as patent counsel for XOMA, a Berkeley-based biotechnology company known as a leader in the development of therapeutic antibodies.

Prior to practicing law, she conducted research in immunology, molecular biology, biochemistry and genetics at Stanford University and at the California Institute of Technology through a post-doctoral fellowship awarded by the Arthritis Foundation.

Professional/Civic Activities
  • American Bar Association
  • American Intellectual Property Law Association
  • Forum for Women Entrepreneurs
  • Intellectual Property Law Association of Chicago
  • San Francisco Intellectual Property Law Association
  • Silicon Valley Indian Professionals Association

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, Singapore and Washington, D.C.

Court Admissions
  • U.S. District Court for the Northern District of Illinois

Bar Admissions
  • Bar of Illinois
  • U.S. Patent & Trademark Office
Education
  • J.D., University of Chicago Law School (1986) (cum laude)
  • Ph.D., University of Illinois (1980) (microbiology/immunology; Milan Novak Award for Excellence in Microbiology)
  • M.S., University of Illinois (1976)
  • B.A., Rosary College (1973)

PRACTICES & INDUSTRIES
Life Sciences
Patents, Trademarks, Copyrights & Related Transactions
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