
With over 25 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, including Artificial Intelligence in life sciences and synthetic biology industries. She also has conducted hundreds of IP due diligence for companies and investors at all stages of investment. Dr. Shieh-Newton is known for her creative, business-savvy solutions and strategic thinking.
Dr. Shieh-Newton has significant experience in a wide range of life sciences, synthetic biology, and clean technology industries that allows her to provide creative solutions and render pragmatic business advice to her clients. Her practice focuses on global patent strategy, creation of valuable IP portfolios, preparation and prosecution of patent applications, comprehensive portfolio management, freedom-to-operate analysis, opinion work, inter partes review (IPR) and other post-grant proceedings, and complex landscape searches and white space analysis.
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 >$2 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, hedge funds, 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 and engineered immune cells), immunotherapy, cell therapy, 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 & yeast 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.
In 2023, Dr. Shieh-Newton earned a certificate in Artificial Intelligence in Pharma and Biotech from MIT Sloan School of Management.
Dr. Shieh-Newton is in leadership positions at the firm, currently serving on the firm’s Policy Committee (i.e., Executive Committee). She founded and is chair of 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 Equity Advisory Committee and Women’s Initiative Steering Committee.
Dr. Shieh-Newton was recognized on the Chambers USA list for Patent Prosecution (2022 & 2023), LMG Life Science’s “Patent Strategy Attorney of the Year – California” (2023), selected as one of the Top 250 Women in IP by Managing Intellectual Property (2022 & 2023), named to the National Law Journal's Intellectual Property Trailblazers list 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, Mark Hammond
Recording: 2021 MIATTY Retreat - Opening Remarks and Fireside Chat with Charlie Ferris
November 9, 2021 | Webinar
Life Sciences Newsletter — September 2021
September 1, 2021 | Article | By Adam Lenain, William Whelan, Jonathan L. Kravetz , Terri Shieh-Newton
AI in Biotech and Synthetic Biology: What Can Be Protected? What Should Be Kept Secret?
August 11, 2021 | Blog | By Joshua Berk, Terri Shieh-Newton
Year in Review: The Most Popular IP Posts of 2020
January 14, 2021 | Blog | By Christina Sperry
Life Sciences Newsletter — October 2020
October 19, 2020 | Article | By Adam Lenain, William Whelan, Jonathan L. Kravetz , Terri Shieh-Newton
Life Sciences Newsletter — Inaugural Edition
August 20, 2020 | Article | By Adam Lenain, William Whelan, Jonathan L. Kravetz , Terri Shieh-Newton
Patenting Considerations for Artificial Intelligence in Biotech and Synthetic Biology – Part 2: Key Issues in Patent Subject Matter Eligibility
January 30, 2020 | Blog | By Terri Shieh-Newton, Marguerite McConihe
News & Press
Trio Of Attorneys Honored At 2023 LMG Life Sciences Americas Awards
September 08, 2023
Managing Intellectual Property Names Terri Shieh-Newton To 2023 “Top 250 Women in IP”
April 28, 2023
Mintz Advises Underwriters of Viking’s $287.5 Million Public Offering of Common Stock
April 10, 2023
Second Wave Of Biosimilar Cases Sharpens Patent Counsel Focus
January 27, 2023
Artificial Intelligence and Intellectual Property
August 19, 2022
Mintz Creates Equity Advisory Council To Drive The Firm’s Commitment To Equity In Workplace
May 16, 2022
Women, Influence & Power in Law 2020: Terri Shieh-Newton
October 29, 2020
Mintz Practice Groups and Attorneys Garner Top Rankings in 2020 Edition of The Legal 500 United States
June 12, 2020
Locking Down the IP Community
March 18, 2020
Women Increase Share of US Patents, But Only to 12 Percent
February 12, 2019
Subject Matter Eligibility Under 35 U.S.C. § 101 – Life Sciences
June 1, 2016
Events & Speaking
Third Annual Bay Area Diversity Event: Mentoring & Sponsorship for Success and Happiness
Domenico Winery
Empowering Women Change-Makers in The Synthetic Biology Industry
Mission Bay Conference Center, San Francisco
Protecting Your IP in the Age of the Collaborative Economy
San Francisco Center for Economic Development
San Francisco, CA
With over 25 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, including Artificial Intelligence in life sciences and synthetic biology industries. She also has conducted hundreds of IP due diligence for companies and investors at all stages of investment. Dr. Shieh-Newton is known for her creative, business-savvy solutions and strategic thinking.
Recognition & Awards
- Recognized as one of the Top 250 Women in IP by Managing Intellectual Property (2022 & 2023)
- Shortlisted as Patent Strategy Attorney of the Year – California in LMG Life Sciences (2023)
- Named in the National Law Journal as an Intellectual Property Trailblazer (2023)
- Recognized in Business Today's list of 10 Most Influential Intellectual Property Attorneys in California for Patent Prosecution (2023)
- Recognized in Chambers USA: California – Intellectual Property: Patent Prosecution (2022 & 2023)
- Finalist for Managing Intellectual Property's National Practitioner of the Year – Patent Prosecution (2022) & named Patent Star (2023)
- Listed on IAM Patent 1000 “World’s Leading Patent Practitioners” (2020 - 2023)
- Recognized by The Legal 500 United States for Healthcare: Life Sciences (2019 – 2023)
- 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)