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Mr. MacRae has an extensive breadth and depth of knowledge and experience dealing with every issue involving or related to patent law.
Mr. MacRae’s practice involves providing strategic and due diligence counseling in complex and complicated situations entailing all aspects of patent law and intellectual property rights, particularly to the pharmaceutical industry and with a focus on chemical patent matters. He has represented Big Pharma in multiple potential and completed business acquisitions and ventures; advised Big Pharma and biotech companies regarding pre-litigation and ongoing litigation analyses and strategies in preparing for and defense of potential litigations; and assisted in the management of patent dockets of many multinational companies. Additionally, he has guided clients in structuring, preparing, and negotiating agreements for a broad range of intellectual property and technology-centered transactions, including licenses, technology transfers, complex partnerships, strategic alliances, royalty monetization, and merger and acquisition transactions.
Over the course of his decades-long career, he has also successfully prosecuted strategically important patents for his clients, as well as led the training of associates and agents in the art of patent prosecution. He has effectively argued numerous appeals before the Board of the United States Patent and Trademark Office (USPTO), and he has argued before the United States Court of Appeals for the Federal Circuit. Additionally, he has successfully litigated contested proceedings, such as inter partes reviews and multiparty interferences, before the USPTO Board.
Additionally, Mr. MacRae is a highly experienced litigator, having litigated numerous high-stakes patent cases, successfully defending patents covering hundred-million and billion dollar drug products and representing leading pharmaceutical companies in Hatch-Waxman cases concerning compounds, compositions, and usage methods. He started his career representing generic drug companies in famous cases, but then switched to representing innovator drug companies.
As a partner, he has litigated against dozens of generic companies and has been the primary attorney responsible for developing strategies to defeat generic challenges to infringement, validity, and enforceability of his clients’ patents. He is particularly known for his intuitive and artful deposition skills, having taken and defended every important expert and fact deposition in every case that he has been involved in as a partner. For example, he took the winning deposition of the leading adverse-expert witness that enabled his client to obtain a preliminary injunction against generic companies that blocked the marketing of a generic competitor product.
Some of the sub-specialty areas that Mr. MacRae routinely counsels on include: pharmaceuticals, diagnostics, antibody therapies, gene therapies, cancer therapies, polymer chemistry and catalysts, food chemistry, nutraceutical and vitamin compositions, organoleptics, liquid crystal technology, and medical devices.
Mr. MacRae has moderated at ACI Paragraph IV Dispute conferences in areas including standards for establishing inequitable conduct. He is also a lecturer at CLE conferences concerning developments in patent law.
Credentials
Education
St. John's University School of Law (J.D.)
St. John’s University Graduate School of Arts and Science (M.S., organic chemistry)
St. John's University (B.S., cum laude, with honors in chemistry)
Professional Admissions
State of New York
United States District Court for the Southern District of New York
United States District Court for the Eastern District of New York
United States District Court for the Western District of New York
United States Court of Appeals for the Federal Circuit
Supreme Court of the United States
United States Patent & Trademark Office
PTAB Bar Association (including pro bono)
Professional Activities
American Bar Association
New York State Bar Association
PTAB Bar Association
American Mensa Society
Legal Employment
Partner, Loeb & Loeb LLP, Patent Life Sciences and Litigation, New York, NY, July 2007 – July 2023
Partner/Associate, Bryan Cave LLP (now Bryan Cave Leighton Paisner LLP), Patent Life Sciences and Litigation, New York, NY, August 1997 – June 2007