Courtenay C. Brinckerhoff

Courtenay Brinckerhoff is a partner and intellectual property lawyer with Foley & Lardner LLP, and a vice chair of the firm’s Intellectual Property Department. Courtenay's practice focuses on assisting clients with all aspects of obtaining, defending, evaluating, licensing, and enforcing patents and conducting freedom-to-operate and due diligence investigations. Courtenay is the editor and primary author for Foley’s PharmaPatentsBlog.com, which keeps 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 25+ years, Courtenay has represented clients in diverse industries 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.

Courtenay works with clients across chemical and biotechnology industries including pharmaceutical, food, industrial, and energy sectors, pharmaceuticals (chemical and biotechnological), human and animal food products, nutraceuticals, medical devices, and industrial technologies. She has particular experience with transdermal pharmaceutical products (patches, gels and liquids), oral dosage forms (including controlled/extended release formulations), enzyme-based technologies, microbial technologies, diagnostic and therapeutic antibodies, active and passive immunization therapies, and personalized medicine, as well as with industrial films, carbon nanotube technologies, biofuels, and carbon capture technologies.

She has served as vice chair of the firm’s Chemical, Biotechnology & Pharmaceutical Practice and chair of the firm’s IP Associate Training & IP Policies and Procedures Committee, and is an active member of the firm's PTAB Trials Practice and Life Sciences Industry Team.

Courtenay 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

• Selected by her peers for inclusion in The Best Lawyers in America© in the fields of Patent Law (2021-2023) and Biotechnology and Life Sciences Practice (2023)
• Received the IP Distinguished Alumni Award from George Mason University Antonin Scalia Law School (April 2017)
• Named JD Supra Readers’ Choice Top Author (2017-2021) in the categories of pharmaceutical industry and patents for her work on the PharmaPatents blog
• Recognized among IAM Patent 1000 – The World’s Leading Patent Practitioners (2014-2016, 2020-2021) for patent prosecution
• Named one of the Top Women in IP by Managing IP and an IP Star by Managing IP (2015)

Education

Courtenay 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.

Courtenay 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, Courtenay received an award for outstanding achievement in chemistry from the Virginia Section of the American Chemical Society.

Thought Leadership

Courtenay 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 Courtenay, 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 biosimilars BPCIA framework.

Courtenay writes and speaks on topics important to clients in chemical, biotechnological, pharmaceutical, food and personalized medicine industries. She has been an invited speaker at the AIPLA Annual Meeting, the FDLI Annual Meeting, the Intellectual Property Owner's Association annual meeting, the PTAB Bar Association 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.

Courtenay currently serves as vice chair of the Intellectual Property Owner's Association Patent Office Practice Committee, and serves on the Board of Directors for the PTAB Bar Association.

Selected Publications and Presentations

• Author, “Salvaging Patent Term Adjustments Under Supernus,” PharmaPatents (Blog) (April 21, 2020)
• Author, “Will the Biologic Transparency Act Shrink the Biosimilar Patent Dance Floor?,” PharmaPatents (Blog) (May 7, 2019)
• Author, “Did the Federal Circuit Misdiagnose Julitis Claim 1?,” PharmaPatents (Blog) (April 9, 2019)
• Author, “Federal Circuit Upholds Method of Treatment Claims Under Vanda and Distinguishes Mayo,” PharmaPatents (Blog) (March 26, 2019)
• Author, “Termination Product Development Precludes Standing to Appeal PTAB IPR Decision Upholding Patent,” PharmaPatents (Blog) (February 19, 2019)
• Author, “A Fresh Look at the Lead Compound Analysis,” PharmaPatents (Blog) (January 22, 2019)
• Author, “USPTO Terminates Extended Missing Parts Pilot Program,” PharmaPatents (Blog) (December 31, 2018)
• Author, “Don’t Touch that Priority Claim!,” PharmaPatents (Blog) (October 16, 2018)
• Author, “USPTO Director Iancu Reveals Proposed New Patent Eligibility Guidelines,” PharmaPatents (Blog) (September 25, 2018)
• Author, “Federal Circuit Says No OTDP Between Novartis Patents that Straddle URAA,” PharmaPatents (Blog) (September 25, 2018)
• 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)