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 co-chair of the firm’s AI Life Sciences IP 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
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
MintzEdge Entrepreneur Perspective: Una Ryan Guides Entrepreneurs from Startup to Exit
November 26, 2019 | Podcast | By Jeremy Glaser, Terri Shieh-Newton
Patenting Considerations for Artificial Intelligence in Biotech and Synthetic Biology - Part 1
September 30, 2019 | Blog | By Terri Shieh-Newton, Marguerite McConihe
Valuable IP Portfolios
August 27, 2018 | Video | By Terri Shieh-Newton
Extension of U.S. Patent and Trademark Office’s Cancer Immunotherapy Pilot Program
June 28, 2017 | Blog | By Terri Shieh-Newton
USPTO Fast-Tracks Cancer Immunotherapy Patent Applications
July 8, 2016 | Blog | By Terri Shieh-Newton
Pitfalls When Refiling a Priority Application under Article 4 of the Paris Convention
June 30, 2016 | Blog | By Terri Shieh-Newton
UPDATE: Subject Matter Eligibility under 35 U.S.C. § 101 – Life Sciences
May 18, 2016 | Alert | By Terri Shieh-Newton
Reminder - Biosimilars Webinars: A Five-Part Legal and Regulatory Issues Series
January 6, 2016 | Blog | By Terri Shieh-Newton, Joanne Hawana
Biosimilars Webinars: A Five-Part Legal and Regulatory Issues Series
December 15, 2015 | Blog | By Terri Shieh-Newton, Joanne Hawana
News & Press
Startups Are Using AI to Predict Responses to Cancer Drugs
December 28, 2023
How Pharma Leaders Talk About Ethics in a Highly Criticized Industry
November 9, 2023
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
Finalist for Managing Intellectual Property's National Practitioner of the Year – Patent Prosecution (2022, 2024) & named Patent Star (2023)
Recognized as one of the Top 250 Women in IP by Managing Intellectual Property (2022 & 2023)
Winner of 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 Chambers USA: California – Intellectual Property: Patent Prosecution (2022 & 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)
Recognized in Business Today's list of 10 Most Influential Intellectual Property Attorneys in California for Patent Prosecution (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)