Overview

Amy Hamilton leverages a 32-year career at Eli Lilly and Company to help pharmaceutical and life science companies manage and protect their patent portfolios in a manner informed by an in-depth understanding of the business environment in which such companies operate.

Amy is driven by a desire to help innovative clients be rewarded for their creativity. She helped spearhead the development of patent law’s written description requirement so that the scope of protection in biotechnology patents appropriately matches the contribution of the inventor. This allows for competition and provides patients with more treatment options while protecting medicines from generic competition. 

Intellectual Property Expertise

  • Securing patents protecting human and animal pharmaceutical products.
  • Patent litigation.
  • Counseling clients on strategies to maximize intellectual property protection and freedom to operate in view of competitors’ intellectual property rights.
  • Drafting policies, training and conducting internal investigations related to trade secrets.
  • Influencing intellectual property law through amicus briefs and participation in trade associations.

Commercial and Contract Expertise

  • Conducting due diligence on transactions involving IP and regulatory issues.
  • Drafting and advising on intellectual property aspects of commercial contracts.
  • Counseling on the rights and responsibilities incurred through existing agreements.
  • Developing research and material transfer agreements between industry and other parties.

In-House Patent Experience

Amy retired from Eli Lilly and Company’s Patent Division in 2014 as Vice President and Deputy General Patent Counsel, ending a tenure with Lilly that began 32 years prior when she joined as a molecular biologist. Her responsibilities with Lilly throughout her career included:

  • Counseling senior management on intellectual property strategies, including the IP aspects of major acquisitions.
  • Developing IP litigation strategies.
  • Managing patent portfolios, including international patent procurement and maintenance.
  • Overseeing Hatch-Waxman and biotech litigations, including the seminal cases of the Regents of the University of California v. Eli Lilly and Company and Ariad v. Eli Lilly and Company.

Personal Interests

Amy enjoys competitive crossword puzzle solving and is an aspiring novelist.

Credentials

Bar Admissions

Indiana

Court Admissions

U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Southern District of Indiana

Education

Indiana University Robert H. McKinney School of Law
J.D. cum laude (1989)

Vanderbilt University
M.S. in Molecular Biology (1982)

Indiana University
B.S. in Microbiology (1980)

Insights & Events

Other Perspectives
  • The Importance of Leadership in Developing Your Career
    Panelist, International Women’s Leadership Forum, New York City, June 2014
  • IP Portfolio Development: Maintaining a Meaningful Portfolio for an Established Company
    Panelist, 2014 Mid-Winter Institute, Phoenix, January 2014
  • Antibody Patents – Written Description
    Panelist, American Intellectual Property Law Annual Meeting, Washington, D.C., 2012
  • American Conference Institute Biosimilars Conference
    Co-Chair, 2011-12
  • The Written Description Requirement: Why It’s a Good Thing (Seriously)
    Panelist, American Intellectual Property Law Annual Meeting, Washington D.C., 2011
  • Producing a Robust Written Description to Satisfy Ever-Shifting Requirements and Ensure Patent Validity
    American Conference Institute’s 14th Advanced Forum on Biotech Patents, Boston, November 2012
  • Biosimilars
    The Definitive Forum on the Legal, Regulatory and Commercial Realities of Biosimilars, New York City, May 2012
  • New Standards and Controversies in Double Patenting Type Obviousness: Repercussions for Paragraph IV Challenges
    American Conference Institute’s 2nd West Coast Edition Paragraph IV Disputes, San Francisco, December 2011
  • 2nd Annual IP Law Symposium
    The George Washington University School of Law, May 2010
  • Panel on Biotechnology Commerce: Survival in a Competitive Marketplace, Conference: At the Crossroads—Public/Private Priorities Concerning Access to Genetic Information
    University of Maryland School of Law, 2002
  • Corporate Depositions in Patent Infringement Cases: Rule 30(b)(6) Is Broken and Needs to Be Fixed
    Co-author, Intellectual Property & Technology Law Journal, April 2007

Leadership & Community

Professional Associations

  • American Intellectual Property Association — Board of Directors, 2007-10, Biotechnology Committee (Former Chair and Former Vice-Chair), Amicus Committee, 2010-13; AIPLA Fellow, 2011-present
  • Indiana State Bar Association

Civic Activities

  • Indiana University McKinney School of Law — Alumni Association Board of Directors, 2002-05
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