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4

Band 4

About

Provided by Terri Shieh-Newton

USA

Practice Areas

With over 22 years of experience, Dr. Shieh-Newton plays a strategic role for her clients as she guides their patent strategy, portfolio management and investments. Trained as an immunologist at Johns Hopkins School of Medicine, where she earned a PhD in Cellular and Molecular Medicine, she works with companies of all sizes in a wide range of life sciences and clean technology industries. She also manages and conducts due diligence for companies and investors. Dr. Shieh-Newton is known for her creative, business-savvy solutions and collaborative work style.

Dr. Shieh-Newton has significant experience in a wide range of life sciences and clean technology industries that allows her to provide creative solutions and render pragmatic business advice to her clients. Her practice focuses on preparation and prosecution of patent applications, patent strategy, comprehensive portfolio management, construction of valuable portfolios, inter partes review (IPR) and other post-grant proceedings, interferences, and complex landscape searches and white space analysis in the life sciences, synthetic biology, and clean technology sectors.

Dr. Shieh-Newton leads and conducts due diligences for both private and public companies and investors. Dr. Shieh-Newton has been the primary IP counsel on many deals on behalf of investment bankers and underwriters for IPOs and other capital market offerings totaling >$1 billion. Dr. Shieh-Newton has also worked on company-side reverse mergers, public offerings and mergers & acquisitions. She has also worked with private equity firms and venture capitalists on due diligence assessment for investments and landscape analysis for formation of new funds and companies.

In addition, Dr. Shieh-Newton’s practice includes assessing freedom-to-operate positions and rendering patentability and invalidity opinions. She has extensive experience in evaluating patent landscapes to advise clients seeking to enter competitive markets, as well as advising clients on third-party challenges and risk mitigation strategies. Dr. Shieh-Newton has worked on biotechnology patent litigations, oppositions, and inter partes reviews.

Dr. Shieh-Newton has worked on a wide variety of technical areas including antibodies, biologics and biosimilars, immuno-oncology (including chimeric T-antigen receptors), immunotherapy, gene editing (e.g., CRISPR technology), stem cells, regenerative medicine, gene therapy, synthetic biology, microbiomes, enzymes, protein engineering, protein production and therapeutics, vaccines and adjuvants, diagnostics and biomarkers, cancer, biofuels, microbial engineering, industrial fermentation, production of target chemical using biological processes, quantum sensors, biological computations units, and artificial intelligence/machine learning for life science applications amongst other subject matters.

Dr. Shieh-Newton has worked with emerging companies, universities, as well as larger companies. Representative matters include work done for Roche, Genentech, 10x Genomics, DuPont/Danisco/Genencor, Regeneron, Ariosa, University of California, and Stanford University.

Dr. Shieh-Newton was trained as an immunologist at Johns Hopkins School of Medicine, where her doctoral research focused on natural killer cells and the early immune responses to HIV and SIV infection. Dr. Shieh-Newton was a student fellow with Nobel Laureates Dr. Joseph Goldstein and Dr. Michael Brown, researching farnesylated ras proteins.

Dr. Shieh-Newton co-chairs the firm’s Life Science Artificial Intelligence & Machine Learning group. She also serves as co-chair of the Minority Attorneys & Agents affinity group and serves on the Diversity Committee and Women’s Initiative Steering Committee. Dr. Shieh-Newton was selected as one of the “100 Most Influential Women in Business in the Bay Area” by the San Francisco Business Times, identified among the “World’s Leading Patent Practitioners” in Intellectual Asset Magazine’s Patent 1000, and recognized in The Legal 500 “United States for Healthcare: Life Sciences.”

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