Partner
Leslie has represented clients before the U.S. Patent and Trademark Office (USPTO) in patent appeals, interferences, reissues, reexaminations, and inter partes reviews (IPRs). Her U.S. litigation experience includes representation of both plaintiffs and defendants in biotechnology and pharmaceutical cases. She coordinates worldwide patent portfolio strategies, evaluates and analyzes competitors' patent positions around the world, and advises and renders opinions on issues of patentability, inventorship, validity, claim scope, infringement, and freedom-to-operate.
In addition, she has prepared and prosecuted patent applications throughout the world and has been involved in opposition and appeal proceedings in numerous countries and at the European Patent Office (EPO). She has patent experience in the fields of immunology, virology, molecular and cellular biology, and small molecule and natural product pharmaceuticals, including antibody technologies, RNA-based gene therapies, vaccines and diagnostics, inflammatory and autoimmune disease therapies, metabolic disorder therapies, pluripotent and stem cell therapies, and cancer therapies.
Leslie was a member of a team who represented Biogen against Medeva for infringement of patents covering hepatitis B antigens in the U.K. Patent Court, Court of Appeals, and House of Lords. She also assisted in the successful defense against opposition of these same patents at the EPO's Technical Board of Appeals. She represented Institut Pasteur in a series of inter partes reexaminations of patents involving homologous recombination technology. Leslie successfully appealed USPTO decisions on key patent applications for Syntonix Pharmaceuticals and University of Edinburgh. She has represented Biogen, Genetics Institute, Wyeth, and Creative BioMolecules in interferences involving molecular biology inventions.
Leslie is a frequent guest speaker on the affirmative use of and best defense to inter partes reexamination and IPRs. She has extensively studied and is a guest speaker on the impact of the America Invents Act (AIA) on the biotechnology and pharmaceutical industries. Leslie previously served as a member of the firm's compensation committee.
Various recognitions of Leslie's practice include being named as a leader in the field of intellectual property law by Chambers USA, and a WIPR Leader for patents in the United States by World IP Review. The Legal 500 U.S. listed Leslie for patent prosecution, re-examinations, and post-grant proceedings, and for patent portfolio management and licensing. Managing Intellectual Property recognized her as an "IP Star Top 250 Women in IP," and as an "IP Star" in Massachusetts. Intellectual Asset Management's Strategy 300 named Leslie as a Global Leader and a Top IP Strategist while LMG Life Sciences has consistently ranked her as an Intellectual Property: Life Sciences Star and recognized her for her contributions in the fields of "Patent Prosecution, Patent Strategy & Management".
Precision BioSciences v. Institut Pasteur
Reexamination Nos. 95/000,443, 95/000,427, 95/000,490, 95/000,491, USPTO, Judge Ponnaluri
10-1150, S. Ct., Judges Breyer, Roberts, Scalia, Kennedy, Thomas, Ginsburg, Alito, Sotomayor, Kagan
Chiron Corp. v. Eli Lilly and Vertex Pharmaceutical
4:98-cv-02974, N.D. Cal., Judges Wilken, Hamilton
Schering Corp. v. American Home Products Corp.
2:00-cv-02944, D.N.J., Judges Bissell, Greenaway, Jr.
Event
Patents and the Expectation of Success Doctrine Patents and the Expectation of Success Doctrine
January 8, 2020
Webinar
Event
Life Sciences Workshop: Updates and Recent Trends in Pharmaceutical and Biotechnology Patent Law Life Sciences Workshop: Updates and Recent Trends in Pharmaceutical and Biotechnology Patent Law
May 2, 2019
Cambridge
Event
Life Sciences Workshop: Biotech Health Check—Updates and Recent Trends in Pharmaceutical and Biotechnology Patent Law Life Sciences Workshop: Biotech Health Check—Updates and Recent Trends in Pharmaceutical and Biotechnology Patent Law
May 10, 2018
Boston
Articles
Practice Tips for Avoiding Terminal Disclaimers and Maintaining PTA Practice Tips for Avoiding Terminal Disclaimers and Maintaining PTA
November/December 2017
Landslide"McDonell is best known for advising pharmaceutical and biotechnology companies on how to grow their portfolios."
Intellectual Asset Management Patent 1000
“McDonell also relishes getting to grips with the intricacies of post-grant proceedings as well as EPO oppositions, and mines a rich seam of life sciences patenting know-how in doing so.”
Intellectual Asset Management Patent 1000
“Local managing partner McDonnell upholds its outstanding life sciences reputation in the dynamic Boston market. She emphasises patent prosecution, but gives elegant counsel around infringement issues, deals and post-grant actions.”
Intellectual Asset Management Patent 1000
“‘First-rate’ Leslie McDonell is recognized for her counsel to life sciences companies on the management of IP portfolios and contentious USPTO engagements. Interviewees say: ‘She is very responsive and knowledgeable about the biotechnology field.’”
Chambers USA
“Leslie McDonell is esteemed by clients, who say: ‘She is responsive, efficient and easy to work with’ and add ‘I value her opinions and advice.’ Her areas of strength include handling patent prosecution matters and representing clients in post grant review proceedings.”
Chambers USA
“Leslie McDonell specializes in biotechnology and pharmaceutical patent matters, including prosecution and re-examination proceedings. Clients say her strength lies in ‘a deep understanding not only of what is likely to persuade a patent examiner or a court, but also of what matters to the company.’”
Chambers USA
“The strategic counselling and portfolio management skills of Leslie McDonell are favoured by blue-chips in the pharmaceutical and biotechnology spheres, among others.”
Intellectual Asset Management Patent 1000
“Boston-based Leslie McDonell takes ‘a holistic view making sure that a client’s actions in one case doesn’t create problems elsewhere in the portfolio.’”
Legal 500 United States
“One client says of McDonell, ‘She sees the whole picture. She's thinking not only what claims we could potentially get, but what claims would matter to our business. And she sees how potential arguments on one issue or in one jurisdiction could raise issues in another jurisdiction.’”
LMG Life Sciences
“Leslie McDonell is noted for her strong technical knowledge in the biotechnology and pharmaceutical areas and is regularly engaged for her strategic counsel on the management of IP portfolios. Her areas of ability include clearance searches, inventorship disputes and post-grant reviews at the PTAB.”
Chambers USA
“Leslie McDonell is a dab hand at drafting. ‘She does fabulous work for her clients, getting to know their business goals and making sure everything is directed towards their realization. Her communication is impressive too. She’s always available to discuss important matters with due consideration of the bigger picture.’”
Intellectual Asset Management Patent 1000
“(...) seasoned partner Leslie McDonell (...) ensures her team members integrate seamlessly with the client to provide perfectly calibrated and immediate support whatever comes up.”
Intellectual Asset Management Patent 1000
“Leslie McDonell is managing partner of the Boston office…she is skilled in conducting due diligence investigations for companies.”
Managing Intellectual Property’s IP Stars
“Leslie McDonell flies Finnegan’s flag in the local life sciences scene.”
Intellectual Asset Management Patent 1000
“Leslie McDonell is managing partner of the Boston office and is renowned for providing clients, ranging from start-ups to large corporations, with strategic IP counseling.”
Managing Intellectual Property’s IP Stars
“The lead on this [work with client Vertex] is seasoned partner Leslie McDonell, who ensures her team members integrate seamlessly with the client to provide perfectly calibrated and immediate support whatever comes up.”
Intellectual Asset Management Patent 1000
"McDonell is best known for advising pharmaceutical and biotechnology companies on how to grow their portfolios."
Intellectual Asset Management Patent 1000
“McDonell also relishes getting to grips with the intricacies of post-grant proceedings as well as EPO oppositions, and mines a rich seam of life sciences patenting know-how in doing so.”
Intellectual Asset Management Patent 1000
“Local managing partner McDonnell upholds its outstanding life sciences reputation in the dynamic Boston market. She emphasises patent prosecution, but gives elegant counsel around infringement issues, deals and post-grant actions.”
Intellectual Asset Management Patent 1000
“‘First-rate’ Leslie McDonell is recognized for her counsel to life sciences companies on the management of IP portfolios and contentious USPTO engagements. Interviewees say: ‘She is very responsive and knowledgeable about the biotechnology field.’”
Chambers USA
“Leslie McDonell is esteemed by clients, who say: ‘She is responsive, efficient and easy to work with’ and add ‘I value her opinions and advice.’ Her areas of strength include handling patent prosecution matters and representing clients in post grant review proceedings.”
Chambers USA
“Leslie McDonell specializes in biotechnology and pharmaceutical patent matters, including prosecution and re-examination proceedings. Clients say her strength lies in ‘a deep understanding not only of what is likely to persuade a patent examiner or a court, but also of what matters to the company.’”
Chambers USA
“The strategic counselling and portfolio management skills of Leslie McDonell are favoured by blue-chips in the pharmaceutical and biotechnology spheres, among others.”
Intellectual Asset Management Patent 1000
“Boston-based Leslie McDonell takes ‘a holistic view making sure that a client’s actions in one case doesn’t create problems elsewhere in the portfolio.’”
Legal 500 United States
“One client says of McDonell, ‘She sees the whole picture. She's thinking not only what claims we could potentially get, but what claims would matter to our business. And she sees how potential arguments on one issue or in one jurisdiction could raise issues in another jurisdiction.’”
LMG Life Sciences
“Leslie McDonell is noted for her strong technical knowledge in the biotechnology and pharmaceutical areas and is regularly engaged for her strategic counsel on the management of IP portfolios. Her areas of ability include clearance searches, inventorship disputes and post-grant reviews at the PTAB.”
Chambers USA
“Leslie McDonell is a dab hand at drafting. ‘She does fabulous work for her clients, getting to know their business goals and making sure everything is directed towards their realization. Her communication is impressive too. She’s always available to discuss important matters with due consideration of the bigger picture.’”
Intellectual Asset Management Patent 1000
“(...) seasoned partner Leslie McDonell (...) ensures her team members integrate seamlessly with the client to provide perfectly calibrated and immediate support whatever comes up.”
Intellectual Asset Management Patent 1000
“Leslie McDonell is managing partner of the Boston office…she is skilled in conducting due diligence investigations for companies.”
Managing Intellectual Property’s IP Stars
“Leslie McDonell flies Finnegan’s flag in the local life sciences scene.”
Intellectual Asset Management Patent 1000
“Leslie McDonell is managing partner of the Boston office and is renowned for providing clients, ranging from start-ups to large corporations, with strategic IP counseling.”
Managing Intellectual Property’s IP Stars
“The lead on this [work with client Vertex] is seasoned partner Leslie McDonell, who ensures her team members integrate seamlessly with the client to provide perfectly calibrated and immediate support whatever comes up.”
Intellectual Asset Management Patent 1000
Award/Ranking
10 Finnegan Attorneys Named to the 2023 IAM Strategy 300 List 10 Finnegan Attorneys Named to the 2023 IAM Strategy 300 List
October 5, 2023
Intellectual Asset ManagementAward/Ranking
Finnegan Upholds Tier 1 Marks in 2023 LMG Life Sciences Rankings Finnegan Upholds Tier 1 Marks in 2023 LMG Life Sciences Rankings
September 21, 2023
LMG Life SciencesPress Release
Managing Intellectual Property IP Stars: Finnegan Scores Top Patent Rankings Across the Board Managing Intellectual Property IP Stars: Finnegan Scores Top Patent Rankings Across the Board
July 13, 2023
Managing Intellectual PropertyPress Release
Finnegan Receives Top Rankings from Intellectual Asset Management; 46 Attorneys Ranked Finnegan Receives Top Rankings from Intellectual Asset Management; 46 Attorneys Ranked
June 30, 2023
Intellectual Asset ManagementAnnouncement
Finnegan Partner Leslie McDonell Named a Global Leader by Intellectual Asset Management Finnegan Partner Leslie McDonell Named a Global Leader by Intellectual Asset Management
January 5, 2023
Intellectual Asset ManagementPress Release
Finnegan Continues to Hold Top-Tier LMG Life Sciences 2022 Rankings Finnegan Continues to Hold Top-Tier LMG Life Sciences 2022 Rankings
September 22, 2022
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