Michael A. Shinall
Michael Shinall counsels pharmaceutical and biotechnology companies and investors on a variety of IP and patent matters. Using his industry and research experience in the fields of chemistry and pharmaceuticals, he develops global patent portfolio management strategies with his clients to protect their critical assets, from early stage/foundational patent filings, through late stage lifecycle management filings. He has represented pharmaceutical clients at each stage of the business and regulatory cycle, with a particular specialty in the areas of small molecule therapeutics, formulations, and delivery technologies.
Michael also works with investors and life science companies to assess potential acquisitions or investments through IP due diligence and landscape analyses. He has worked with clients across numerous projects to identify IP issues that may impact valuation when looking to invest in or acquire a target company or technology.
Representative Engagements
IP Due Diligence
- Performed IP due diligence for companies and investors across a range of investments and technologies, including assessment of:
- Pharmaceutical company developing small molecule regimens for treating breast cancer.
- Small molecule company developing new small molecule therapies for treating skin cancers.
- Biotechnology company developing small molecule and peptide-based therapies for treating obesity.
- Small molecule company focused on treatment of inflammatory skin disorders.
- Biotechnology company that has developed therapies for treating olfactory loss.
- Biotechnology company developing compounds for treating neurodegenerative diseases such as Parkinson’s Disease.
- Clinical stage pharmaceutical company developing technology for treatment of asthma.
- Biotechnology company developing small molecule therapy for treating polycythemia.
- Clinical stage pharmaceutical company developing GnRH receptor antagonist for treating prostate cancer and endometriosis.
- Nucleic acid delivery technology company developing new lipid-based agents.
- Clinical stage pharmaceutical company developing delivery technologies for treating urothelial cancer.
- Small molecule company developing compounds for treating breast cancer.
- Small molecule company developing therapies for treating metabolic disorders.
Patent Prosecution and Counseling
- Represented small molecule therapy company from foundational patent filings through public offering (and beyond).
- Developed IP protection strategies for a company developing nucleic acid therapeutic delivery technologies.
- Represented a small molecule company in a technology area having a complex IP landscape through multiple successful investment rounds.
- Identified and implemented new opportunities for life cycle management filings for a company developing formulation technologies.
Post Grant Proceedings and Contentious Matters
- Life sciences company developing bifunctional small molecule therapies.
- Life sciences company developing radiolabeled theranostics.
- Chemical company in inter partesreview proceeding challenging patent directed to polymer technology.
Publications and Presentations
- “The Secrets to PTAB Success: Advanced IPR Strategies,” panelist, IPWatchDog: PTAB Masters, February 2023.
- “2022 Trends at the PTAB,” speaker, Boston Patent Law Association’s Annual Intellectual Property Symposium, June 2022.
- “Priority and Disclosure: Challenges and Protections to Small Inventors in a First-to-File World," author, 94 J.Pat. & Trademark Off. Soc’y 362.
Professional and Community Involvement
- Member, Boston Patent Law Association
- Member, PTAB Bar Association
- Member, Boston Bar Association
- Category 1 road cyclist.
Education & Credentials
- Boston College Law School
- JD, 2013
- Senior Editor, International & Comparative Law Review
- Boston University
- MA, 2009, Organic Chemistry
- Fairfield University
- BS, 2007
Admissions
Massachusetts
U.S. District Court, Massachusetts
U.S. Patent and Trademark Office
Michael's Insights
Choate's IP Insights Podcast 01.30.2023
Challenges in Using Experts to Perform Experiments to Establish Inherency at PTAB Proceedings
In this episode of Choate's IP Insights Podcast Series, Eric Marandett and Michael Shinall discuss the nuances and challenges in using experts to perform experiments in order to prove inherency during PTAB proceedings.