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Terri Shieh-Newton, PhD

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TShieh-Newton@mintz.com

+1.415.432.6084

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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 in 2022 as one of the Top 250 Women in IP by Managing Intellectual Property (2022) and also as a finalist for MIP's National Practitioner of the Year - Patent Prosecution. She has also been recognized as among the “100 Most Influential Women in Business in the Bay Area” by the San Francisco Business Times, identified annually 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.”

viewpoints

Examining Art Units to Avoid Subject Matter Eligibility Challenges for Bioinformatics and AI-related Patents

November 18, 2021 | Blog | By Terri Shieh-Newton, Lily Zhang, Mark Hammond

Computer-based inventions – especially in the machine learning (ML), bioinformatics, and artificial intelligence (AI) fields – are susceptible to subject matter eligibility challenges. Subject matter eligibility challenges may prevent a patent application from being granted by the United States Patent and Trademark Office (USPTO) and may even be asserted to invalidate a patent post-grant. In recent years, the Federal Circuit has implemented a multi-step test to determine whether patent claims would survive a subject matter eligibility challenge.
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Mintz name partner and former Washington, DC office head Charlie Ferris discusses his role in drafting the Civil Rights and Voting Rights Acts in the ‘60s and the relevance of this legislation today with ELB partner and chair of the Diversity Committee, Ty Thomas.
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Life Sciences Newsletter — September 2021

September 1, 2021 | Article | By Adam Lenain, William Whelan, Susan Berson, Jonathan L. Kravetz, Terri Shieh-Newton

This edition covers return-to-work challenges, insight on patenting AI innovations, FDA guidance on medical devices, transactional and IP activity in the life sciences, and recent Mintz work for life sciences clients.
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AI in Biotech and Synthetic Biology: What Can Be Protected? What Should Be Kept Secret?

August 11, 2021 | Blog | By Joshua Berk, Lily Zhang, Terri Shieh-Newton

Machine learning (ML), bioinformatics, artificial intelligence (AI), and other computational tools have become ubiquitous in the biotech and synthetic biology industries because such technology allows for rapid processing of a large amount of complex data to produce advancements in therapeutics and diagnostics. As the landscape becomes increasingly more competitive, it is important for companies, particularly in the aforementioned industries, to obtain patent protection for their AI-related technology.
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Year in Review: The Most Popular IP Posts of 2020

January 14, 2021 | Blog | By Christina Sperry

As 2021 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2020.  According to many readers, hot topics included Chinese foreign filing licenses, patenting involving either artificial intelligence (AI) or COVID-19, inter partes review, and attorney fee awards.
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Life Sciences Newsletter — October 2020

October 19, 2020 | Article | By Adam Lenain, William Whelan, Susan Berson, Jonathan L. Kravetz, Terri Shieh-Newton

The October Mintz Life Sciences Newsletter brings the latest developments in life sciences, legal insights, and industry activity.
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Life Sciences Newsletter — Inaugural Edition

August 20, 2020 | Article | By Adam Lenain, William Whelan, Susan Berson, Jonathan L. Kravetz, Terri Shieh-Newton

The inaugural Mintz Life Sciences Newsletter brings the latest developments in life sciences, legal insights, and industry activity straight to your inbox.
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In our first blog in this multi-part series, we explored key considerations for protecting artificial intelligence (“AI”) inventions in biotech and synthetic biology. In this part 2 of the series, we will examine some key considerations and hurdles in patenting machine learning-based biotech or synthetic biology inventions.
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MintzEdge Entrepreneur Perspective: Una Ryan Guides Entrepreneurs from Startup to Exit

November 26, 2019 | Podcast | By Jeremy Glaser, Terri Shieh-Newton

In this podcast, Una Ryan, a successful life sciences entrepreneur and investor, shares her fascinating story of how she came to the United States and became a successful life sciences entrepreneur, investor, and artist – and offers important tips to help entrepreneurs achieve success.
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Patenting Considerations for Artificial Intelligence in Biotech and Synthetic Biology - Part 1

September 30, 2019 | Blog | By Terri Shieh-Newton, Marguerite McConihe

Artificial Intelligence (AI) inventions have aided development in nearly every industry, but perhaps none more so than synthetic biology. For synthetic biology researchers, AI has developed into a vital tool to create cutting edge applications.
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News & Press

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Mintz continues its ongoing commitment to ensuring the firm is an equitable workplace, establishing a new Diversity, Equity and Inclusion (DEI) committee that reports directly to the firm's main decision making body, the Policy Committee. The new Equity Advisory Council (EAC) will be responsible for driving equity for the firm’s attorneys, especially women, attorneys of color and LGBTQ+ attorneys.
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Mintz is pleased to share that two attorneys and the firm’s Patent practice have been shortlisted in the 2022 edition of Managing Intellectual Property’s (MIP) Americas Awards. The awards recognize the “remarkable achievements and developments” of firms, individuals and companies impacting the IP sector over the past year. 
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Corporate Counsel profiled Mintz Member Terri Shieh-Newton, PhD, as one of its 2020 Women, Influence & Power in Law Awards honorees in the Law Firm Awards: Collaborative Leadership category.
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In the latest guide, Mintz garnered rankings as a top national firm in eight practice areas, and 32 firm attorneys were individually recognized.
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The March 17 edition of the Skilled in the Art newsletter published by Law.com quoted Mintz Member Terri Shieh-Newton on the recent closing of the United States Patent and Trademark Office (USPTO) to the public due to COVID-19, and its impact on applicants and examiners.
Mintz’s Terri Shieh-Newton shares her insights on gender equity, how to fix USPTO, and the most exciting thing in biotech today.
This feature story looks at a recent U.S. Patent and Trademark Office (USPTO) study; primarily focusing on the increased share of U.S. patents that include at least one woman as an inventor. This number has tripled in the last 30 years. In spite of this increase, the article goes on to note that female inventors still only make up slightly more than 10 percent of all inventors on U.S. patents granted in 2016. Mintz Member Terri Shieh-Newton is quoted providing commentary in the piece.

Mintz represents NuCana, which completed its approximately $114 million initial public offering. The United Kingdom-based clinical-stage company focuses on improving treatment outcomes for patients with cancer.

Subject Matter Eligibility Under 35 U.S.C. § 101 – Life Sciences

June 1, 2016

Terri Shieh-Newton, a Mintz Member, authored this IP Frontline column discussing the USPTO's issuance of a memorandum to the “Patent Examining Corps to provide further Examiner instructions relating to subject matter eligibility under 35 U.S.C. § 101.”  
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Events & Speaking

Moderator
May
9
2022
Conference Reference Image
Speaker
Apr
12
2022

Built with Biology Conference 2022

formerly SynBioBeta

Oakland Marriott City Center

Conference Reference Image
Speaker
Sep
30
2020

SynBioBeta 2020

View the Panel Recording

Conference Reference Image
Moderator
Oct
1
2019

SynBioBeta 2019

SVN West, 10 S Van Ness Ave, San Francisco, CA 94103

Moderator
Nov
1
2018

Wine & War Stories

Domenico Winery, 1697 Industrial Road, San Carlos, CA

Speaker
Oct
3
2018
Moderator
Oct
2
2018

Empowering Women Change-Makers in The Synthetic Biology Industry

Mission Bay Conference Center, San Francisco

Speaker
Oct
3
2017

SynBioBeta SF 2017

SynBioBeta

San Francisco, CA

Panelist
Jun
3
2015

Protecting Your IP in the Age of the Collaborative Economy

San Francisco Center for Economic Development

San Francisco, CA

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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.

Recognition & Awards

  • Recognized as one of the Top 250 Women in IP 2022 by Managing Intellectual Property (2022)
  • Finalist for Managing Intellectual Property's National Practitioner of the Year - Patent Prosecution (2022)
  • Recognized in Chambers USA: California – Intellectual Property: Patent Prosecution (2022)
  • Identified in the IAM Patent 1000, a listing of the “World’s Leading Patent Practitioners” (2020 – 2021)
  • Selected as law firm honoree in the Collaborative Leadership category of Corporate Counsel’s Women, Influence & Power in Law Awards (2020)
  • Selected as one of the 100 Most Influential Women in Business in the Bay Area by the San Francisco Business Times (2020)
  • Recognized by The Legal 500 United States for Healthcare: Life Sciences (2019 - 2020)
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Terri Shieh-Newton, PhD

Member

San Francisco