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Marcie Beth Clarke, PhD
Alternate image for Marcie Beth Clarke, PhD

Marcie Beth Clarke, PhD

Partner

617.449.6537
Boston
mclarke@mccarter.com

Marcie has a passion for understanding the science behind new products and technologies and is known for her responsiveness and attention to detail when advising clients.

Dr. Marcie Beth Clarke has earned a national reputation as a life science intellectual property lawyer, particularly in the fields of biotechnology, molecular biology, immunology, microbiology, molecular diagnostics, gene therapy, antiviral therapeutics, agriculture, and protein therapeutics.

In order to help clients develop effective IP strategies to protect and facilitate commercialization of pharmaceutical products and platform technologies, Marcie assists clients with patent drafting, worldwide patent prosecution, patentability analyses, patent validity opinions, freedom-to-operate opinions, competitive landscape analyses, and investigating and resolving inventorship disputes. She works with clients on intellectual property due diligence for financings, including initial public offerings (IPOs), and on licensing strategies, negotiations, and agreements. Marcie has worked with a broad range of clients, including start-ups, academic institutions, and established pharmaceutical companies.

Marcie won first place in the Boston Patent Law Association’s 2010 Annual Writing Competition for her article entitled “The ‘Separate’ Written Description Requirement and its Impact on Biotechnology Patent Law” and graduated as Salutatorian from Suffolk University Law School. While at Suffolk University Law School, she received an Academic Leadership Tuition Scholarship and was awarded the Honorable Mention for her legal brief in the Legal Practice Skills Program.

Prior to law school, Marcie received her PhD in Molecular Microbiology from The University of Texas Southwestern Medical Center. She was the recipient of the Ruth Kirschstein Pre-doctoral Fellowship from the National Institutes of Health and has published scientific articles in several journals, including the Proceedings of the National Academy of Science. Marcie has presented her work at various scientific meetings, including the Gordon Conference on Sensory Transduction, and was a Richard and Mary Finkelstein invited speaker at the American Society for Microbiology General Meeting.

Outside of her busy practice, Marcie enjoys spending time with her husband and two children, traveling, and volunteering in the local community.

Representative Matters

Various life sciences clients—Worldwide IP and patent strategy

Strategized and implemented worldwide intellectual property and patent strategies for clients’ lead product candidates and platform technologies in a variety of life science areas, including gene therapy, microbiology, antibody therapeutics, T cell receptors, diagnostics, novel drug delivery mechanisms, vaccines, and agricultural products.

Various life sciences clients—Patent portfolio prosecution

Drafted and prosecuted a patent portfolio regarding delivery mechanisms for large protein therapeutics for a university, which was licensed by a start-up that was ultimately acquired by an international pharmaceutical company for about $90 million, as well as an antibody therapeutic patent portfolio which was acquired by a large pharmaceutical company for about $235 million.

Pharmaceutical company—Competitive landscape and freedom-to-operate analyses

Performed competitive landscape and freedom-to-operate analyses for clients’ research programs and lead product candidates, including the a freedom-to-operate clearance for a client’s manufacturing process for a multimillion dollar per year therapeutic product.

Various biotechnology companies—Collaboration and license agreements

Assisted clients with intellectual property and patent negotiations with respect to collaboration and license agreements, including a collaboration agreement worth about $80 million up-front and about $1.4 billion in potential future payments.

Various biotechnology companies—IP due diligence

Performed intellectual property due diligence for multiple clients’ financings and initial public offerings (IPOs), including sales of clients’ common stock with net proceeds of about $30 million, $50 million, and $75 million.

Highlights

Recognitions

Recognition image 10959
Massachusetts Rising Star, Super Lawyers, 2016-2021
Recognition image 10997
IAM Patent 1000, 2020-2022
Ranking Disclaimers: No aspect of this advertisement has been approved by the Supreme Court of New Jersey. For SuperLawyers methodology, see https://www.superlawyers.com/about/selection_process.html. For IAM Patent 1000 methodology, see https://www.iam-media.com/directories/patent1000/info/methodology.

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Services

Intellectual Property
Patents
Life Sciences
Venture Capital & Emerging Growth Companies

Education

Suffolk University Law School JD Intellectual Property Law Concentration, Patent Law Specialization, summa cum laude, 2011
University of Texas Southwestern Medical Center PhD Molecular Microbiology, 2005
University of Texas BS Molecular Biology, 2001

Bar Admissions

Massachusetts
Vermont
U.S. Patent & Trademark Office

Memberships & Certifications

Boston Patent Law Association

Junior League of Boston
Secretary, 2014-2015

intellectual property
News|Recognition
IAM Patent 1000 Recognizes McCarter for Excellence in Patent Law
6.29.2022
Media item displaying IAM Patent 1000 Recognizes McCarter’s Leading Patent Law Practice
News|Recognition
IAM Patent 1000 Recognizes McCarter’s Leading Patent Law Practice
IAM Patent 1000
7.21.2021
Insights Speaking Microphone 2
Events|Webinar
IP Virtual Executive Roundtable For Life Sciences
Consero
10.8.2020
Insights Awards Top Stars
News|Recognition
IAM Patent 1000 Recognizes McCarter for Transactional, Litigation, and Prosecution Practices in Patent Professionals Rankings for 2020
6.23.2020
Insights Publication Magazine Open Stack
News|Quote
Microbiome Biotechs Grapple with How to Protect Their IP
Boston Business Journal
8.8.2019
Insights News Contracts Stack
News|Quote
For CRISPR Patents, the Ugliest Phase May Be Still to Come
STAT News
9.17.2018
Insights News Courthouse Columns
News|Quote
Broad Institute Wins Landmark Case over Gene Editing Patents
Boston Business Journal
9.10.2018
Insights Publication Magazine Stack
Publications|Alert
New USPTO Proposal for Claim Interpretation in PTAB Proceedings Would Strengthen Patent Rights
Intellectual Property Alert
5.10.2018
Insights News Contract Signing
Publications|Alert
USPTO Issues Guidance on PTAB Proceedings in Light of SAS Institute Case
Intellectual Property Alert
4.27.2018
Insights Publication Magazine Pages
Publications|Alert
USPTO Issues Written Description Guidance on Antibody Claims in View of Amgen v. Sanofi Case
Intellectual Property Alert
3.19.2018
Insights News Contract Stack
News|Quote
3 Must-Knows for Provisional Patent Applications
Law360
8.10.2017
Insights Awards Trophies
News|Press
Law360 Names Attys Who Moved Up The Firm Ranks In Q2
Law360
7.13.2016
Insights Awards Stars
News|Press
McCarter Promotes Eight to Partnership in Six Locations
McCarter Press Release
4.1.2016
McCarter & English, LLP
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