Christopher McWhinney

Experienced IP protection for life sciences

Chris McWhinney helps clients in almost all aspects of intellectual property (IP) law, with particular emphasis in the acquisition, protection, enforcement and defense of patent rights, as well as IP-driven business transactions. With experience ranging from working with global pharmaceutical companies to startups, his clients span a diverse range of industries, including:

• Life sciences
• Pharmaceuticals
• Biotechnology
• Medical devices
• Software
• Mechanical arts

Chris has deep experience handling patent matters and takes a practical, cost-effective approach to achieving business goals and resolving client issues.

• Manages and performs patent work spanning a variety of technologies. Chris managed and prosecuted a portfolio of over 500 patents and patent applications for several years, more than doubling the annual allowance rate for the portfolio while significantly reducing the client’s legal expenses. Chris's prosecution efforts resulted in several patents that were successfully tested in litigation or that formed a substantial part of a business, for instance, patents covering tapentadol and cebranopadol. He has handled cases involving a variety of technologies, including pharmaceuticals and biotechnology (both large and small molecule therapeutics, diagnostics and methods of treatment), drug delivery, and medical and mechanical devices and systems, among other things.
• Structures and negotiates various complex commercial transactions. Chris' transactional work includes M&A as both asset and stock purchase agreements; joint ventures and collaborations; clinical research agreements; agreements for drug and biologic therapy discovery, development and research; related manufacturing, supply, sales and marketing agreements; and numerous licenses of IP and related rights.
• Handles disputed matters. Chris's patent strategy, prosecution, counseling and transactional clients benefit from his experience handling disputed matters.

• Represented defendant in patent infringement action involving online video contests
• Represented defendant in patent infringement action involving digital file management.
• Served as a testifying expert on patent law issues and as a person of skill in the art in a $100 million arbitration involving polymer chemistry.
• Resolved numerous patent infringement cases including disputes involving: software used to manage networked devices; website operations; electronic visual display systems; calculating credit and trust scores; videophone systems; veterinary pharmaceuticals; microscopes; and online advertising.
• Resolved an international dispute between universities over a collection of patents involving CRISPR technology.
• Represented patent applicant in interference directed to methods of obtaining biologically active oligonucleotide molecules known as aptamers.
• Represented patent applicant in multiple interferences directed to decomposing perfluorinated compounds.
• Managed and prosecuted a portfolio of over 500 patents and patent applications for a client, more than doubling the annual allowance rate for the portfolio while significantly reducing the client’s annual legal expenses.