Strategic Transactions, Licensing and Intellectual Property Law

Life sciences attorney - consultant.

Lead IP counsel for the Transplant and Immune Modulated Disorders business unit with worldwide responsibility for biologics patent portfolio, including Thymoglobulin® (sales >$229M) and lead IP counsel for the Cardio-Metabolic-Renal business unit, with worldwide responsibility for biologics patent portfolio, including Thyrogen® (sales >$181M). Lead IP counsel for Genetics, a leading provider of complex reproductive and oncology testing services performing >1.5 million high-quality, high-clinical value tests annually (sales ≥ $371M). •Provided extensive legal support in ($925M) divestment of the assets of Genetics business unit to Laboratory Corporation of America. Led IP due diligence team in ($24.5M) acquisition of intellectual property assets of Exact Sciences Corporation.•Negotiated patent infringement dispute, settling favorable to the client, saving company $M in litigation fees.•Prepared patents and prosecution in fields of molecular biology, cell biology, genetics, molecular diagnostics, bioinformatics, biomaterials, molecular oncology, immunology, biochemistry, expression platforms, protein therapeutics, biopharmaceuticals, formulations, drug delivery. •Prepared Legal Opinions and Client Counseling: freedom-to-operate, patentability, infringement, and validity assessments.•Conducted third party settlement discussions with results favorable to client, avoiding multi-million dollar payments of license fees and past/future royalties.•Conducted numerous third party patent analyses (freedom to operate, infringement, patentability and validity) favorable to client, precluding payment of multi-million dollars in license fees and past/future royalties. •Organized and managed the exclusively licensed patent rights in a multi-million dollar patent portfolio from a major academic research institution.•Performed extensive transactional work, including due diligence for strategic acquisitions and divestitures, and negotiating and drafting complex contracts.

•Prepared and prosecuted patent applications in a wide range of technologies within the biotechnology, chemistry and pharmaceutical fields.•Counseled academic and corporate clients regarding domestic and international patent strategy.•Conducted freedom-to-operate, patentability, infringement, validity and inventorship assessments and drafted legal opinions and counseled clients thereon.

•Prepared and prosecuted patent applications in a wide range of technologies within the biotechnology, chemistry and pharmaceutical fields.•Counseled academic and corporate clients regarding domestic and international patent strategy.•Conducted freedom-to-operate, patentability, infringement, validity and inventorship assessments and drafted legal opinions and counseled clients thereon.

Prepared and prosecuted domestic and international patent applications in the biotechnology field.

Neurogenetics laboratory – identification and characterization of genes involved in learning and memory.

Molecular oncology laboratory – characterization of transcriptional events involved in activation of the myb oncogene.

Molecular oncology laboratory – characterization of transcriptional events involved in activation (and repression) of rearranged µ gene and translocated c-myc oncogene.