Courtenay C. Brinckerhoff

Partner

Overview

Courtenay Brinckerhoff is a partner and intellectual property lawyer with Foley & Lardner LLP. Ms. Brinckerhoff’s practice focuses on assisting clients with all aspects of obtaining, defending, licensing, and enforcing patents and conducting freedom-to-operate and due diligence investigations. Her roles as chair of the firm’s Associate Training & IP Policies and Procedures Committee and editor and primary author for Foley’s PharmaPatentsBlog.com keep her up to date on emerging legal issues and evolving patent office practices, which she leverages to meet her clients’ strategic objectives.

Representative Experience

Over the past 20 years, Ms. Brinckerhoff has represented clients before the U.S. Patent Office, the Patent Trial and Appeal Board, and the U.S. Court of Appeals for the Federal Circuit, and has been involved in complex patent matters, including a four party interference, Inter Partes Reexaminations, Inter Partes Reviews, and ANDA litigation.

Ms. Brinckerhoff works with clients in diverse industries, including pharmaceuticals (chemical and biotechnological), human and animal food products, nutraceuticals, and medical devices. She has particular experience with transdermal pharmaceutical products (patches, gels and liquids), oral dosage forms (including controlled/extended release formulations), enzyme-based technologies, diagnostic and therapeutic antibodies, active and passive immunization therapies, and personalized medicine.

She has served as vice chair of the firm’s Chemical, Biotechnology & Pharmaceutical Practice and is an active member of the firm's Appellate Practice and Life Sciences Industry Team.

Ms. Brinckerhoff joined Foley as an associate after clerking for the Hon. Judge Schall on the U.S. Court of Appeals for the Federal Circuit. Prior to her clerkship, she worked at Foley as a patent agent and law clerk.

Recognition

Ms. Brinckerhoff received the IP Distinguished Alumni Award from George Mason University Antonin Scalia Law School in April 2017. She was named JD Supra Readers’ Choice 2017 Top Author in the categories of pharmaceutical industry and patents for her work on the PharmaPatents blog. She was recognized among IAM Patent 1000 – The World’s Leading Patent Practitioners (2014 - 2016) for patent prosecution. She also was named one of the Top Women in IP by Managing IP and an IP Star by Managing IP in 2015.

Education

Ms. Brinckerhoff graduated from George Mason University School of Law (J.D., summa cum laude, 1999) as valedictorian of her class. While a law student, she served as a member of the George Mason University Law Review and published an article in the University of Baltimore Intellectual Property Law Journal related to legislation that limits liability for infringement of medical method patents.

Ms. Brinckerhoff graduated from the University of Virginia with a B.S. in chemistry, with distinction, in 1988 and was elected to Phi Beta Kappa. In 1988, Ms. Brinckerhoff received an award for outstanding achievement in chemistry from the Virginia Section of the American Chemical Society.

Thought Leadership

Ms. Brinckerhoff has been following U.S. patent reform since its inception, and she and other Foley colleagues co-authored the treatise, America Invents Act: Law & Analysis (Wolters Kluwer 2012). The interface between patent law and FDA law is another area of interest to Ms. Brinckerhoff, who has written and spoken on issues, including patent term extensions, the scope of the Hatch-Waxman “safe harbor,” the ANDA litigation framework, and the new biosimilars framework.

Ms. Brinckerhoff writes and speaks on topics important to clients in chemical, biotechnological, pharmaceutical, food, and personalized medicine industries, and has been an invited speaker at the AIPLA Annual Meeting, the FDLI Annual Meeting, and the annual Advanced Patent Law Institute presented by the University of Texas School of Law, the United States Patent and Trademark Office, and George Mason University Antonin Scalia Law School.

Selected Publications and Presentations

  • Author, “Are State University-Owned Patents Immune from Validity Challenges at the USPTO?” Washington Legal Foundation Legal Opinion Letter, Vol. 26 No. 10 (May 2017)
  • Author, “Biosimilars: Sandoz v. Amgen; Amgen v. Sandoz,” American Bar Association Preview of U.S. Supreme Court Cases, Issue No. 7 Vol. 44 (2017)
  • Presenter, “Resolving U.S. Patent Disputes: ANDA Litigation vs. Biosimilar Litigation,” 2017 SelectUSA Seminar: U.S. Market Strategies for Korean Life Sciences Firms, Seoul, South Korea (April 2017)
  • Presenter, “Patenting Diagnostic Methods After Prometheus,” 2016 Midwest Intellectual Property Institute (Kansas Bar Association) (March 2016)
  • Presenter, “Update on Subject Matter Eligibility in the Life Sciences,” San Diego Intellectual Property Law Association Dinner Meeting (March 2016)
  • Co-author, “Patent Watch: Have the Biosimilar Floodgates Been Opened in the United States?” Nature Reviews Drug Discovery, Vol. 14 No. 5 (April 2015)
  • Author, “A Practical Guide to Patent Reform,” Genetic Engineering & Biotech News, Vol. 32 No. 13 (July 2012)
  • Author, “Counting Down to Patent Reform,” Medical Device and Diagnostic Industry, Vol. 34 No. 4 (April 2012)
  • Author, “Reinventing Patent Law,” Medical Device and Diagnostic Industry, Vol. 33 No. 11 (November 2011)
  • Author, “Inventor Rights Not Affected by Bayh-Dole,” Genetic Engineering & Biotech News, Vol. 31 No. 14 (August 2011)
  • Author, “Patenting Personalized Medicine Methods,” Genetic Engineering & Biotech News, Vol. 31 No. 3 (February 2011)
  • Author, “What Biotech Needs to Know About Bilski,” Genetic Engineering & Biotech News, Vol. 30 No.14 (August 2010)
  • Author, “Court Ruling Could Lengthen Patent Term,” Genetic Engineering & Biotech News, Vol. 30 No. 3 (February 2010)
  • Author, “Written Descriptions: How Much Is Enough?,” Genetic Engineering & Biotech News, Vol. 29 No.17 (October 2009)
  • Author, “Enforceability of Patent Licenses Under Fire,” Genetic Engineering & Biotech News, Vol. 28 No. 14 (August 2008)
  • Author, “Court Blocks PTO-Initiated Patent Reform,” Genetic Engineering & Biotech News, Vol. 28 No.9 (May 2008)
  • Author, “Protecting Inventions in the U.S. and Europe,” Genetic Engineering & Biotech News, Vol. 28 No. 5 (March 2008)
  • Author, “Court Blocks Patent Office Claims & Continuation Rules,” NutraIngredients-USA.com (November 2007)
  • Author, “New Prosecution Paradigms Under the New Patent Office Rules,” BNA’s Patent, Trademark & Copyright Journal, Vol. 74 No. 1835 (September 2007)
  • Author, “New Rules: USPTO May Have Underestimated Impact,” Law 360 (August 2007)
  • Author, “KSR: A Bump in the Road for Biotech?” Genetic Engineering & Biotech News, Vol. 27 No. 13 (July 2007)
  • Author, “Key Patent Ruling No Biotech Killer,” The Journal of Life Sciences (May 2007)
  • Author, “U.S. Foreign Filing License - Don’t Let Your Invention Leave Home Without It,” BIO International Convention’s BIO Buzz Official Show Daily (May 2007)
  • Author, “U.S. Foreign Filing License – Passport for Your Inventions,” NutraIngredients-USA.com (April 2007)
  • Author, “Maximizing the Value of Biotech Patents, Knowledgeable Patent Owners Can Take Advantage of Patent-term Extension Provisions,” Genetic Engineering & Biotech News, Vol. 26 No. 19 (November 2006)
  • Author, “Maximizing Patent Value by Maximizing Patent Term,” NutraIngredients-USA.com (October 2006)
  • Author, “Patent Holder’s Right to Exclude Is Limited,” Genetic Engineering & Biotech News, Vol. 26 No. 14 (August 2006)
  • Author, “PTO Utility Guidelines Receive Stamp of Approval, ESTs and the Fisher Decision,” Genetic Engineering & Biotech News, Vol. 25 No. 21 (December 2005)
  • Author, “Will the Integra Decision Leave Pioneer Drug Manufacturers Out in the Cold?,” American Biotechnology Laboratory Journal (January 2004)
  • Author, “Can the Safe Harbor of 35 U.S.C. 271(e)(1) Shelter Pioneer Drug Manufacturers?" Food & Drug Law Journal (1998)

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