Lisa Mueller Photo

Lisa L. Mueller

Managing Partner, Raleigh Office
Industry Group Chair, Life Sciences

Overview

Lisa provides strategic counsel on complex patent issues to clients in the pharmaceutical, biopharmaceutical, biotechnology and chemistry sectors. She brings an in-depth knowledge and extensive experience to her work advising clients on patent protection, freedom to operate and invalidity of blockbuster drugs they aim to produce and distribute.

Lisa’s advice on the full spectrum of global intellectual property portfolio management includes patent prosecution, opposition and other post-grant proceedings, and diverse regulatory matters for the following areas:

 
  • Small molecules and biologics
  • Drug delivery and drug preparation methods
  • Diagnostics and personalized medicine
  • Physical and materials sciences
  • Food science and nutrition
  • Renewable/green chemistry
  • Polymer chemistry
  • Agricultural, ornamental, vegetable and tree breeding and development

Since 2001, Lisa has worked closely with in-house legal departments of global pharmaceutical firms regarding their patent development and enforcement strategies. In this partnership, she provides training to new in-house counsel and meets with scientists and other business development to anticipate and resolve a wide array of problems including navigation of U.S. Food and Drug Administration approval.

Lisa holds office hours at the various life science incubators in and around Rockville, Maryland. Along with a rotating group of Michael Best lawyers, she confers with entrepreneurs, venture capitalists and scientists about their legal and regulatory concerns.

A thought leader on pharmaceutical and biopharmaceutical patent law, Lisa speaks frequently to legal and industry groups, and publishes widely. At Michael Best, she serves as Chair of the Life Sciences and Chemical Practices Group, and as a member of the Management Committee and the Venture Best® industry group. She is the author of an award-winning blog, BRIC Wall, which provides unique insights on patent law developments in the life sciences industry in Brazil, Russia, India and China.

Experience

Blockbuster drug development

Lisa works with global pharmaceutical and biopharmaceutical concerns to develop and bring to market drugs with greater than $1 billion revenue at launch. Her significant experience with a variety of matters including testosterone gels and drugs directed at gastrointestinal and cardiovascular disorders has informed her strategic approach to seeking U.S. Patent and Trademark Office (PTO) approval. She frequently hires experts and uses a keen perspective and careful planning to get the most difficult cases allowed. In fact, Lisa has obtained successful obtained allowance for a number of patents covering blockbuster drugs whose applications had been prepared by and unsuccessfully prosecuted by other firms before she was retained.

Colitis drug defense against multiple opponents

In this defense against third party opposition by multiple parties, Lisa represented the developer of a drug for Crohn’s disease and colitis. Two major pharmaceutical firms had filed opposition with the European Patent Office, and arguments lasted 17 hours -- rare for opposition proceedings. After calling several experts on her client’s behalf, the marathon session concluded with Lisa’s client prevailing, and the drug is currently on the market.

Strategic counsel to a renewable chemistry startup

For the past eight years, Lisa has advised a renewal chemistry concern regarding their development of patent portfolio protecting their business. The firm, in the western United States, currently has more than 80 patents or pending patents. She has provided strategy related to their global patent prosecution strategy, freedom-to-operate, trademarks, trade secrets, licensing and training, and has served as the company’s sole information technology counsel. Lisa has helped company principals develop an intellectual property manual, and developed an IP committee. Due in part to her efforts, the firm has raised more than $30 million.

Honors & Recognitions

  • Best Legal Blog, Intellectual Property, The Expert Institute, Runner-up, 2015

Professional Activities

  • Member, National Association of College and University Attorneys (NACUA)
  • Chair, Women in Bio Mentors, Advisors and Peers Committee, National Chapter
  • Committee Member, Patents and Related Matters Committee, American Chemical Society
  • Member, American Bar Association
  • Member, American Intellectual Property Law Association 

Education

Admissions

Community Involvement

  • Member, Best Buddies, 2014-present
  • Ambassador, National Down Syndrome Society DS, 2014-present
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