Kate Neville - Part 1: From Chemistry Sets to Patent Law - Finding Her Path

Intro - 00:00:01: Welcome to The Biotech Startups Podcast by Excedr. Join us as we speak with first-time founders, serial entrepreneurs, and experienced investors about the challenges and triumphs of running a biotech startup from pre-seed to IPO with your host, Jon Chee.

Jon - 00:00:23: My guest today is Kate Neville, partner at Marshall Gerstein, a law firm with over 60 years of expertise in delivering sophisticated intellectual property advice and legal services to leading businesses, research institutions, universities, and entrepreneurs worldwide. Kate is an accomplished attorney who helps clients secure their inventions globally, combining her doctoral background in microbiology and immunology with over a decade of patent prosecuting experience. She specializes in strategic patent management, preparation, due diligence, and proceedings like re-examinations and oppositions, working closely with biotech startups, big pharma, and nonprofits. Recognized for her expertise, Kate has been named among the world's leading patent practitioners by IAM Magazine since 2013 and is an Illinois super lawyer since 2018. She's also a Life Sciences star by LMG Life Sciences and an IP star by Managing IP. Additionally, she was featured on the 2016 Women Worth Watching list and is included in The Best Lawyers in America for Patent Law. Before joining Marshall Gerstein, Kate earned her PhD in microbiology and immunology from Northwestern University Medical School, where her research focused on experimental models of MS and therapeutic regulation of autoreactive T cell function. She also holds a BS in biochemistry from the University of Notre Dame. Kate's insights into IP law and strategy makes for an incredibly valuable conversation, one that founders don't want to miss. Over the next four episodes, we explore Kate's journey from growing up as the youngest of six to becoming a partner at a leading IP law firm. Kate shares how her leadership style, rooted in trust and autonomy, was shaped by her early experiences and how curiosity and adaptability guided her transition from a PhD to a JD. She also offers essential advice on biotech IP strategies, from aligning science with proactive patenting to navigating enforcement decisions, emphasizing collaboration and diverse perspectives and driving innovation. Today, we'll chat with Kate about growing up with five siblings in a lively household and explore her academic journey from discovering her passion for biochemistry to focusing on immunology during graduate school. Kate also shares how serendipity led her from the lab to a successful career in patent law, leveraging her scientific background and navigate the multidisciplinary field. Without further ado, let's dive into this episode of The Biotech Startups Podcast. Kate, thank you for coming on the podcast. So good to see you again.

  Kate - 00:02:37: Hi, Jon. How are you? Great to see you also.

Jon - 00:02:39: You know, I'm really looking forward to this conversation. And I know as we were kind of doing our homework and, you know, I think we have a lot of really valuable and interesting topics that we want to cover with regards to the intersection of law and science. But before we jump into the meat and potatoes, I really want to just like turn back the hand of time and learn a little about you and how you got to where you are and really how did your leadership philosophy form and what got you into science? So maybe can you take us all the way back? What was your upbringing like?

Kate - 00:03:10: Sure. If I can remember back that far. So I'm the youngest of six kids. So there was always a lot going on in my house, a little bit chaotic. So there's always, there's people. You know, kind of micromanaging you or suddenly you're left alone to fend for yourself. Sometimes there's no in between. So even if you had a question, you would go ask somebody and they would start to work with you and then be like, oh, well, I have to go work on something else. So you were often kind of left there to figure out how it was going to work. And then if you had more questions, go back and ask later once somebody had time. And I think I think. I've taken that approach to my leadership style. I don't like to micromanage people because not everybody responds to that kind of management style. I like to tell people what's expected of them and say, this is our project. This is where we need to be. What can you do? Can you help me on this? And then check in with people. And I think that gives people time to figure out what they're doing if they do have questions. And then it also gives them ownership. I expect people to own their project and come back to me and you better have the answers because that's what we talked about having. And I think that comes from just kind of having this lifestyle where it's always busy and no one was always there to hold your hand or to do anything. I was expected to just kind of figure it out sometimes. And that's a lot of what I do. But I think people respond to that. You know, if you give them the right tools, people can respond to that. 

Jon - 00:04:47: Absolutely. And I think about, you know, I had a similar kind of upbringing, too. I'm an only child, though, so a little bit of a different experience. But my parents were generally pretty hands off. And for better or for worse, you know, it's like you end up making mistakes, too. But my parents kind of just like, let me make the mistake. Obviously, it wasn't like a fatal one. If they saw something, they're like, yeah, don't do that. Like, don't do that. But like kind of setting these kind of like here are the guardrails, but play within it and just like figure it out. And I likewise, it's just kind of like and I think the saying someone said, I can't I don't know who said exactly. But it's like the secret is that there is no secrets about like success. It's more just like go figure it out. Try some things and see what happens. So I love, you know, I empathize with that kind of environment in the house.

Kate - 00:05:42: Yeah, especially as the. Youngest people might not have even known where you were and you could just kind of sit back and observe how everybody interacted with each other and then what was going on and kind of take that and make your own decisions. You're like, okay. And I think that's that works here, too. You know, if you're in various client meetings or other meetings, you kind of sit back, see how people react and then, you know, take it from there. 

Jon - 00:06:05: Yeah. And I think too, like a lot of it is like listening and observing is like an underrated like superpower. Like sometimes it's a lot of the kind of the chest beating and like pounding the table and loudness gets a lot of the, it makes out as noisy. It's like, it's right. So it gets a lot of the attention, but you don't get a lot of attention by just like observing and just kind of listening. So I think that's a incredible skillset to learn early on, especially at such a young age. And as you're growing up, was science always in or around the household, or was that something where you just like serendipitously, you know, found a passion for it and a spark?

Kate - 00:06:44: My dad was an engineer. He was an electrical engineer. So science was always around and he was always tinkering in our garage and kind of building things or fixing things. I'll put that in quotes because some things were fixed, but they didn't always work like they originally did, which is another great skill to have and be able to work within that constraint. So there was always science kind of hovering around, but nobody in my family was a chemist or like in the medical field. It's something that I fell in love with at an early age. My brother got the chemistry set, but I just kind of took it and I would play on the front porch or in the yard and see what all these chemicals did. You're like, ooh, that killed the grass. Okay. I might get in trouble for that, but we'll just cover that up. So I always liked kind of chemistry and seeing what would happen with different things, experimenting along the way. So just kind of formed naturally. 

Jon - 00:07:43: Yeah. And I can also empathize with a father that likes to tinker. My dad's also an engineer, a structural engineer. I have a funny story. Like we had a dog growing up. It was like, we just brought our dog home and he tried to create a dog door from scratch. I was like, you can just buy a dog door. No, he had to fix it.

Kate - 00:08:05: Right. I will fix it.

Jon - 00:08:06: Yeah, yeah. Let's just say that dog door was a whole, whole thing. And I was like, see, dad, we could have just saved ourselves. He's like, but no, like we learned a lot through this process. And I'm like, yeah, we learned how problematic this can be.

Kate - 00:08:22: Right. 

Jon - 00:08:24: So I empathize. And so, you know, you got this early spark, you know, by kind of serendipitous nature with your brother bringing home the chemistry set. When you headed into university, did you know going in that you were going to focus on biochemistry?

Kate - 00:08:38: You know, I wasn't sure what aspect, right? You only know what you're exposed to in your environment. And I only had a smattering and I was like, oh, maybe chemistry or pharmacy seemed interesting, right? You would see the package inserts from an allergy medication or cholesterol medication and you would see these chemical structures and it seems so cool and foreign. You're like, how is this one little pill going to do all of these things that they claim it's going to do? Who thought of this and how did this get in my house and it's being sold to everybody? And so I thought, oh, maybe pharmacy or chemistry or something like that. And then as you go along and you see what's involved in them, you're like, oh, I think, you know, straight chemistry is not for me. I like kind of the biology, the organic chemistry part of it. So I kind of moved towards the biochemistry aspect and then morphed even more kind of more into the biology. Aspect of it. But yeah, without the exposure early on, you kind of only know a little bit of what's out there. So it's nice to, you know, when you get all those other classes, you're like, okay, maybe I don't want physical chemistry. I will let the chemical engineers do that. And I'm going to move over to this molecular biology aspect.

Jon - 00:09:56: And I think too, like that resonates with me because sometimes you got to just like. To figure out what you do want to do, you got to figure out what you don't want to do, or at least it is helpful to figure that out. And- 

Kate - 00:10:08: Sometimes it's a hard way. You're like, oh, that class did not go well.

Jon - 00:10:12: Exactly. Exactly. It's like, maybe that is not my strength. And you don't really get that lesson unless you just put yourself out there and just like, give it a shot. And I think, you know, for when I talked to like folks who are kind of like going through that process right now, they're like, I got to know exactly what I need to do right now. And you're like. It's just okay to meander for a little bit.

Kate - 00:10:33: Yeah, exactly.

Jon - 00:10:34: And then just like get a feel for it.

Kate - 00:10:36: Right. Yeah, I think that's different now. 

Jon - 00:10:39: Yeah, totally. And I guess, you know, when you're kind of thinking about biochemistry and like, this is kind of where I want to be was like, I know for a lot of people, a lot of the time, like their introduction to biochemistry is like, I'm going to be a doctor. I'm like, I need to like go on this pre-med track. Of course, one of the prerequisites is biochemistry. Was that something for you? Or were you just like, biochemistry is cool. Med school is not even a consideration for me. I just like biochemistry.

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Kate - 00:11:07: I thought about med school and I had a lot of friends that were the pre-med track. And so I like to cover all of my bases. So I took the MCATs. I took the GR.

Jon - 00:11:16: Oh, man.

Kate - 00:11:16: I was like, I'll take it all and then figure out what shakes out.

Jon - 00:11:21: Yeah.

Kate - 00:11:21: So I wasn't really sure, but I had, mostly decided that I didn't think med school was for me. I wanted to focus more on the research and kind of getting into the nitty gritty of the science a little bit more. So by my senior year, I had decided no med school for me. I'm going to stick to the scientist grad school route. 

Jon - 00:11:46: Very cool. And for me, I had my undergraduate lab experience that I kind of like stumbled into. And that's where I found my passion for like bench science. Did you have an undergraduate lab experience where you kind of like got to actually firsthand see what it's like to be at the bench?

Kate - 00:12:05: I did. I was lucky enough to work with one of the professors in the biochemistry department, I think starting my junior year. So I got a little bit of experience and I would go in and it just seemed like something from a TV show. It's so foreign. It's so special looking. And I think. You know, as an undergrad, for sure, you're not doing anything important. Just run this test. But I think I did. I was doing Eliza's and I ran a couple of Western blots or something. I was like, wow, this is pretty cool. And then you realize, like, once you go back later, you're like, I don't even know what I was doing. I didn't know what I was looking for. I just like followed the recipe and I'll pipette here and stuff. But it was a bit of exposure. And then... Between my junior and senior year, I just saw it on a bulletin board. There was like, oh, the University of Michigan has, eight week lab research paid. I was like, paid? Wow. So, I just called the number, sent in an application and ended up spending, I think it was eight weeks in Ann Arbor in a yeast lab. So nothing I'd ever done before. And they're doing yeast biology, growing cultures. And so that was more, you know, more lab like than just being going in for a couple hours undergrad, you know there day to day. And you got to meet the people and interact and learn all the different personalities that come with a lab. And I was like, yeah, you know, I think this is for me. So between my undergrad experience and then being able to spend a dedicated time in Ann Arbor, it was a really great introduction.

Jon - 00:13:44: Very cool. The lab, when I was an undergraduate and I was, I had that experience. I was like thinking about, I was like, I was like a glorified pipetter. Like what I was doing was like, is what like a liquid handler would be doing. Like now it is, but like, you know, you got to start somewhere. Right. It's like, you can, you can like mess up a lot of things that have been in the works for a very long time. So they're like-

Kate - 00:14:06: They will not give you.

Jon - 00:14:06:

You go over there.

Kate - 00:14:08: Right. It might not have even have been important. I might not have even had anything real in there. Just see if there's a color change and put it in the plate reader. I don't even know. But it was experience. I got like an hour's worth of college credit out of it. But it was really good.

Jon - 00:14:24: Yeah. And so now it seems like in Ann Arbor you had more of the, okay, this, like, I'm seeing actually more, I'm seeing more of what goes into, you know, bench research. How did you choose Northwestern for your PhD and your focus on immunology?

Kate - 00:14:40: I liked the Northwestern program because I think it fit my personality. When you went in at the beginning, it was a multidisciplinary program. So they didn't make you choose, I want to go into this department. There was no one department you had to apply to. And not knowing exactly what I wanted to do, like I thought I liked immunology, but what do you know from your undergrad classes? Not very much. So I could have done cancer biology. And I liked the program here that... You would do three or four rotations in different areas you might be of interest and then pick one by the end of your first year. And so there was so much freedom to explore that that was very appealing to me. And so it just worked out that the immunology lab was the one I liked. That's what my propensity was when I got here. But it's nice to be able to explore. And like you're saying, you know, check off the things that you know you don't want. You're like, all right, I tried it. That's not for me. Let's go into in this direction. So it was really great.

Jon - 00:15:43: That's amazing. And when you found that lab that truly resonated with you, you know, I guess whose lab was that? And can you talk a little bit about like, what exactly about immunology research got you fired up?

Kate - 00:15:55: Yeah, so it was Steve Miller's lab at Northwestern and on the Chicago campus. So it's near the med school. And so I was doing a lot of my rotations at the med school. So you felt like it was, you know, really focused on medicine and improving people's lives and things like that. And then Steve's lab focused on autoimmune models of multiple sclerosis. And I just always thought something like that was really interesting, right? You can live 30 years without a disease and suddenly develop something. And so there were a lot of ways that the lab was exploring, you know, how people got the disease and then how to fix it because no one, people still don't know. It's been 20 plus years since I've been working on it and people still don't have a great idea of how autoimmune diseases develop. So I worked on. There's a pretty easy model. And then one theory that I think is still viable is that maybe you get some sort of viral infection and then it has molecular mimicry. It looks like your own proteins. And so then the autoimmune disease slowly develops. So I worked on the... Viral. Model. So that literally has its ups and downs because it's like a relapsing remitting disease. But that's one where, you know, you have to infect mice with this virus and hope that it takes. And so sometimes it takes longer than others. And it was a little bit longer model than some people had to work with. So when it worked, it was great. When you had to repeat it, you're like, oh, that's another five to six months that I had to redo this. And you're like, invariably, you always had, you know, everything has to be done duplicate or triplicate regardless. And so if you kind of get some inconsistencies that can make for a little bit longer lab life, but. 

Jon - 00:17:40: Yeah, totally. And I think too, it's like, MS is like hard mode. It's like, and it hit exactly what you just said. Like it's been hard mode for a very long time. And like, I wouldn't imagine as a grad student that you're just like, this is like hard mode on hard mode. Like now I'm like, I have a timetable that I need to get this done. What would you say, you know, reflecting back on your graduate studies, like what were some like memorable challenges and triumphs for you while in the lab?

Kate - 00:18:12: You know, again, I think it's after you start, after you, one, getting your kind of thesis done at the very beginning and working on your own project and, you know, knowing you have something of your own that you're guiding along, you know, with oversight, obviously. And I think, you know, the first time that I got fully through that animal model and was able to isolate cells and see some results of the treatment that I, you know, my part of the project overall in the lab. Which was, it was immune tolerance. So we focused on immune tolerance and how you could try to these animals to their self-antigens. And so seeing, you know, differences, you're like, oh, it worked. Like I finally got something to work. I feel like a scientist today. 

Jon - 00:18:56: Yeah, exactly, exactly.

Kate - 00:18:58: Let's say today, I feel like a scientist. And then, you know, those times when it doesn't work and you've spent years and you're just trying to get it done and repeat it so you can write your thesis and get out and move on. But I think, you know, that from there, talking to your PI and other people in lab and say, okay, what else can we do to kind of supplement this, right? So sometimes one project is not enough or, you know, one is slower than the other. So learning how to, I won't say pivot, but how to incorporate other things and then kind of manage those two things at the same time. You're like, all right, I got this. I can do this project over here and this project over here, I think is a big triumph. And I think when you know you're kind of ready to move on to the next step, you're like, all right, I can juggle a few things. I can make sure everything is still working.

Jon - 00:19:52: I've always thought about that experience too, of like exactly those lessons that you're describing. It's like what a lot of running an organization or kind of leading an organization is like, like you have to do, you're like, you're spinning these plates.

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Kate - 00:20:07: Yes.

Jon - 00:20:08: And you're just really trying to make sure that none of them fall. And then you're like, okay, okay, this one's good. We can kind of like hand this off now and move on to the next. And, you know, especially I didn't understand that. I only now understand that in retrospect. It was just pure distress.

Kate - 00:20:25: Yeah.

Jon - 00:20:26: It- Back then I was like, Oh my gosh, I'm going to drop all of these.

Kate - 00:20:31: Right. You're like, one of them has to work, right? At least can one work?

Jon - 00:20:34: Yeah, exactly. And so, you know, I know, obviously. Law came into the picture. Can you tell, and you know, how did law and going to law school kind of become onto the horizon for you when you were, you know, at the, you were just at the bench?

Kate - 00:20:54: Yeah, I think it was like many things, even discoveries, very serendipitous. You know, you get towards the end of your PhD. And especially then, it might be a little bit less so now, people just assumed you were going to postdoc and then you were going to either want to run your own lab or something. And some people went to industry and they were like, shh. There were whispers like, oh, those traders.

Jon - 00:21:19: Yeah, yeah, yeah.

 Kate - 00:21:21: But people that went to industry were doing great things too. There's great science there. So you're looking for alternative career paths. And it was called alternative then, and now it's just a career path. It's a career path. It's a career path. It's not alternative anymore. And so I just started looking for things where I could use my science because I still love the science, but I just didn't want to be. Hands-on in the lab anymore. I was like, you know, after five or six years, again, you're like, I love it, but I'm not cut out for this part of it. And I had interviewed in-house at a couple of different companies. I interviewed at a consulting company because I think people came in, did like a panel. Oh, consultants, they hire PhDs. And then I would go to some of the consulting events and you're like, oh, I have a PhD in economics. You're like, ooh, economics. That's different. That's different than my PhD. And they might hire a few, but it's only a few, right? And so eventually there was a, while I was still looking, after I defended my thesis and was kind of hanging around the lab looking for something else to do, which my PI and everybody was... Gracious enough to kind of Let me hang around. There was a postdoc in the lab down the hall from me who had just suddenly kind of left. She found a job and people were like, oh, she found a job at this law firm. And I talked to her about it and found out that another friend of mine from graduate school who was in the cancer biology department had also started working at Marshall Gerstein at the law firm. And I said, oh, well, that sounds interesting. So I called them up and I said, what do you do all day? What does this mean? 

Jon - 00:23:04: Yeah, yeah. The marriage of two different worlds. Like, what?

Kate - 00:23:08: Yeah. It was like, what do you do? And the internet, not that it wasn't around, but it was not as robust as it is today. So finding information on what patent law was like or what you could do was harder. I didn't even know what terms to look up. And so I talked to my friend Sharon and I talked to other people and eventually they were looking for people. So I interviewed at the law firm. It just, it sounded interesting. You got to use your science all day. You could read papers and read invention disclosures and have to figure out what they were talking about. And so it turns out it's a... I think, a valuable skill. Like I hope other people think it's valuable, but it was just a really fortuitous event. And so it's been 23 years. Like I've started working in law at Marshall Gerstein and kind of never looked back. 

Jon - 00:24:04: That's amazing. And there's a couple of things that stood out to me. And I, by the way, I explored that route too. Took the LSAT, but didn't end up going.

 Kate - 00:24:14: Got to cover your bases. 

Jon - 00:24:16: Cover the bases. Exactly. I was like, I'm going to like, and exactly I had that same experience. I was taking the LSAT and, you know, getting all that, the whole application process, the whole thing ready to go. And then I was like, shoot, like, kind of like bouncing around this idea for Excedr. And this was a long time ago. It was like almost like 15 years ago, but I was just like doing what one should do is market research. I was like, I was like, maybe before we, like, I dive like headfirst into this thing. So I was like having these conversations about with the, you know, the UC campus and colleagues on campus was like. Would this, would Cedar's business model work? Like, or would you find this valuable? And exactly, they're like. He talking about business in here? I was like, I'm just trying to help. Like, I'm just trying to help. And back then it was just like very much kind of like, get out of here. 

Kate - 00:25:07: Yeah, like whispers, and then-

Jon - 00:25:07: Yeah. But now it's definitely a lot better. There's like a whole, I don't want to say a wholehearted embrace, but it's definitely, they can coexist. And they don't need to be at all. It's like, there's, of course, there's like basic research that can only get done in academia and have like the prerequisite kind of like no industry kind of touching on it to get very good research, basic research done. But there's also like tons of stuff that can be translated and commercialized instead of just like languishing behind a paywall somewhere and never just see the light of day. And so this first job, were you a patent agent?

Kate - 00:25:44: I hadn't made it to the patent agent yet. So we start here as a technical specialist. And so you, again, are there to kind of help. The associates or the agents or. Partners. Review disclosures, and then maybe you'll do a literature search or a patent search and say, has this been done before? What's the closest thing? Or you would read a rejection from the patent office and say, and the patent office will cite other art. You're like, read this art and tell me what's different about it. So they were relying on your technical expertise to kind of burst through the differences in these articles, basically, compared to your invention. Yeah, and when I started, I was like, oh. Even if I do it for a year, I'll have learned something. 

Jon - 00:26:27: Yeah.

Kate - 00:26:28: Right? 

Jon - 00:26:28: Yeah, totally.

Kate - 00:26:29: Take the experience. 

Outro - 00:26:33:

That's all for this episode of The Biotech Startups Podcast. We hope you enjoyed our discussion with Kate Neville. If you enjoyed this episode, please subscribe, leave us a review and share it with your friends. Thanks for listening. And we look forward to having you join us again for part two of our conversation with Kate. The Biotech Startups Podcast is produced by Excedr. Don't want to miss an episode? Search for The Biotech Startups Podcast wherever you get your podcasts and click subscribe. Excedr provides research labs with equipment leases on founder-friendly terms to support paths to exceptional outcomes. To learn more, visit our website, www.excedr.com. On behalf of the team here at Excedr, thanks for listening. The Biotech Startups Podcast provides general insights into the life science sector through the experiences of its guests. The use of information on this podcast or materials linked from the podcast is at the user's own risk. The views expressed by the participants are their own and are not the views of Excedr or sponsors. No reference to any product, service or company in the podcast is an endorsement by Excedr or its guests.