Stephen McNeeney Partner

Stephen McNeeney
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Personal profile

BSc (1st Class Hons) Chemistry, MSc Organic Chemistry, PhD Organic Chemistry

Chartered Patent Attorney, Fellow of the Chartered Institute of Patent Attorneys, European Patent Attorney.

Winner of Moss Prize in 1996, having obtained the highest overall mark the previous year in examinations relating to UK and overseas patent law.

Research/Industry Experience: 1989 to 1993 - Research at Imperial Chemical Industries (ICI), 1993 to 1996 – Patent Department at Fisons Pharmaceuticals (later Astra AB), Joined PC in 1996, became a partner in 1999

Steve acts for a variety of clients, ranging from big pharma, through SME drug discovery and drug development companies, to start-ups and university spin-outs, many of which are based outside the UK, especially in Scandinavia.
 

Specialisms include: Considerable experience of, amongst other things:

Acquisition of, and providing advice on, IP relating to pharmaceutical industry-related inventions, in particular medicinal chemistry, pharmaceutical formulations and new uses.
 
  • Patent portfolio management on a worldwide basis for pharmaceutical clients, including provision of practical, strategic advice on obtaining IP protection, and exploitation of IP assets with pharmaceutical companies’ commercial objectives in mind.
 
  • IP due diligence, evaluating patent portfolios for in-licensing and/or acquisition.


Experience: In addition to above specialisms, done on a day-to-day basis:

Considerable experience in instructing and assisting local patent counsel on prosecution of patent applications in the largest pharmaceutical market (the US), having attended around 40 USPTO interviews

 

Assisting on behalf of smaller pharmaceutical clients in advice on Orange Book listing, and subsequent Hatch-Waxman litigation actions against large generic companies in the District Courts of New Jersey and Delaware, working alongside US litigation counsel and clients in devising litigation strategy, argumentation/witness preparation, whilst coordinating ongoing prosecution strategy on a worldwide basis.


Notable recent success in defending European Patents – Together with his partner Richard Bassett, obtaining and then defending two EPO patents for AstraZeneca’s blockbuster drug Nexium® esomeprazole against opposition by 13 generic pharmaceutical companies.  The patents (for respective salts of the drug) concerned an individual enantiomer (with a specific optical purity) of the existing racemic form of the drug omeprazole.


Examples of clients:

  • AstraZeneca
  • Orexo AB
  • Moberg Pharma AB
  • RSPR Pharma AB
  • Karolinska Development AB and numerous KD portfolio companies