Jill K. MacAlpine Ph.D.
Jill MacAlpine's practice includes patent litigation, counseling, and prosecution, primarily in the chemical and pharmaceutical areas. With 15 years of experience in the field of 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, Dr. MacAlpine 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 prosecution of patent applications; reissue and reexamination proceedings; and interferences.
In addition to counseling and prosecution, Dr. MacAlpine'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.
Dr. MacAlpine 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. Dr. MacAlpine also has significant experience in organic chemistry. She 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.
Dr. MacAlpine has written and lectured on diverse patent law issues and is 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.
- Extensively involved in matters procuring, assessing and/or defending patent rights related to pharmaceuticals drugs, including Lovenox®, Taxotere®, Allegra®, Rimonabant,® Nuvigil®, and Gabitril®, and other products such as Cerament™.
- In re Armodafinil Patent Litigation (D. Del.). Successfully represented Cephalon against several generic companies in Paragraph IV ANDA litigations pertaining to Nuvigil®, Cephalon's prescription medicine used to improve wakefulness
- Recognized by The Legal 500 U.S. as one of the leading lawyers in patent licensing and transactional work, 2014.
- American Intellectual Property Law Association
- American Chemical Society
- Virginia Bar Association
- District of Columbia Bar Association
- Order of the Coif
- Coauthor. "Navigating the Limitations on Discovery in AIA Post-Grant Proceedings," Buffalo Intellectual Property Law Review, Dec. 4, 2015.
- Coauthor. "A Panacea for Inequitable Conduct Problems or Kingsdown Version 2.0? The Therasense Decision and a Look into to the Future of U.S. Patent Law Reform," Virginia Journal of Law & Technology, Fall 2011.
- Coauthor. "Conducting Thorough and Efficient IP Due Diligence Investigations in Corporate Acquisitions," BNA International's IP & Technology Programme, March 2006.
- Coauthor. "Protecting Patents from the Beginning: The Importance of Information Disclosure Statements During Patent Prosecution," Journal of the Patent and Trademark Office Society, Aug. 2000.
- Coauthor. "Preparation of [ meso-tetraphenylchlorophinato] Nickel(II) by Stepwise Deformylation of [ meso-tetraphenyl-2,3-diformyl-secochlorinato] Nickel(II): Conformational Consequences of Breaking the Structural Integrity of Nickel Porphyrins," Inorganica Chimica Acta, June 2005.
- Coauthor. "Evaluation of tetraphenyl-2,3-dihydroxychlorins as Potential Photosensitizers," Journal of Porphyrins and Phthalocyanines, Jan. 2001.
- Coauthor. "A Novel Stepwise Degradation of Porphyrins. Synthesis and Structural Characterization of meso-Tetraphenylchlorophinato Nickel(II) and meso-Tetraphenylsecochlorinato Nickel(II)", Journal of American Chemical Society, 1999.