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Jill K. MacAlpine Ph.D.
+1 202 408 4105
jill.macalpine@finnegan.com

901 New York Avenue, NW
Washington, DC 20001-4413

+1 202 408 4000
Fax +1 202 408 4400

Bar and Court Admissions

  • District of Columbia
  • Virginia
  • U.S. Patent and Trademark Office

Education

  • George Washington University Law School
    J.D., with highest honors, 2003
  • University of British Columbia
    Ph.D., Organic Chemistry, 1999
  • Queen's University
    B.S., Chemistry, with honors, 1993

Jill K. MacAlpine Ph.D.

Partner

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.

Highlights

  • 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

Professional Recognition

  • Recognized by The Legal 500 U.S. as one of the leading lawyers in patent licensing and transactional work, 2014.

Professional Activities

  • American Intellectual Property Law Association
  • American Chemical Society
  • Virginia Bar Association
  • District of Columbia Bar Association
  • Boston Patent Law Association
  • Order of the Coif

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