Dr. Michelle McMullen leverages her 20 years of intellectual property experience and her understanding of biotechnology, pharmaceutical and medical technologies to offer clients real world perspective and guidance.  Her strategic patent counseling includes developing comprehensive IP strategies for licensing, patent-related disputes, patentability requirements and freedom to operate concerns.

Michelle’s practice includes patent procurement, patent enforcement and global patent estate management, in the areas of biologics, stem cell technologies, medical device, peptide and cell therapeutics, metabolomics, diagnostics, vaccines, regenerative medicine, water treatment and food processing. 

When representing biotechnology companies, university clients and start-ups, Michelle works closely with licensing, regulatory, litigation and foreign counsel to strategically coordinate international patent prosecution.  Michelle’s IP diligence practice includes assessment of the strength and weakness of client and third party patent portfolios and recommendations for maximizing value of patent portfolios.

Education

  • Northwestern University (Ph.D.)
    • Biochemistry, Molecular Biology and Cellular Biology
  • DePaul University College of Law (J.D.)
    • University of Illinois at Urbana-Champaign (B.S.)
      • Microbiology

    Bar Admission

    • Illinois
    • North Carolina
    • Admitted to practice before the United States Patent and Trademark Office

    Court Admissions

    • U.S. District Court, Northern District of Illinois

    Professional Affiliations

    • Association of University Technology Managers (AUTM)
    • Licensing Executive Society (LES)

    Recognition

    • Selected for inclusion in Best Lawyers in America® for Patent Law, 2024-2026
    Publications
    All Publications
    Mandatory USPTO PIER Pilot Creates New Risks for PCT National Stage Filings
    Key Takeaways The USPTO’s new PIER pilot program requires applicants with selected § 371 applications to affirmatively respond to a PIER Request for Information (RFI) by electing examination, delaying examination, or abandoning the application. Participation is mandatory for the selected applications, and failure to timely respond to the PIER RFI results in automatic abandonment of the application. Electing the program’s 12-month examination delay may significantly reduce patent term adjustment by stopping the USPTO’s first-action PTA clock and creating applicant-caused delay. These PTA reductions may carry substantial commercial consequences for high-value pharmaceutical and biotechnology assets. The PIER program effectively forces applicants to make prosecution and commercialization decisions much earlier in the national stage process. Applicants should evaluate in advance whether bypass continuations under §
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    New USPTO IDS Fees Raise Strategic Stakes for Biotech Filings
    Key Takeaways Effective Jan. 19, 2025, the USPTO implemented a new fee framework for IDS submissions, charging up to $800 for applications that list more than 200 references. The change is aimed at curbing over-disclosure and helping examiners focus on the most relevant prior art. Biotech and life sciences applications often generate large volumes of references, making it difficult and costly to selectively curate submissions without risking inequitable conduct claims. Practitioners should approach IDS strategy with care, especially when submitting large volumes of prior art. Recent decisions show that burying key references, even if disclosed, can still leave patents vulnerable if the record suggests the examiner didn’t meaningfully consider them. A series of procedural changes at the U.S. Patent and Trademark Office (USPTO) is
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