Licensors and Licensees

You want to get practical business advice from somebody who’s “been there, done that” a few times already.

I have over 30 years of experience in developing IP strategies and successful patent portfolios and in negotiating deals.  While “Practical IP Strategies” provides business rather than legal advice, I’ve learned a lot about business advice and IP while working in the past as in-house general counsel (and corporate secretary) in small enterprises – both nonprofit and private – and have been outside counseled large biopharma.  And I was the life sciences patent practice leader in a major international law firm, and supported work in business development, mergers & acquisitions and litigation. Also served as the founding technology transfer director for the NIH, and now teach strategic planning and technology transfer for the Johns Hopkins biotech masters degree program. So, I understand business challenges as well as the strategies and tactics to resolve them.

How do you develop IP strategies and get “buy-in”?

I start by getting to know your technology, business objectives, budget and business model.  And draft plans always benefit from brainstorming and synergies that come from working with colleagues inside the enterprise. When the time is right to make high level decisions, I have extensive experience as an adviser to senior executives and boards of directors, and also have served in these positions. So I understand the process of helping people with diverse interests and expectations understand issues and consequences and reach consensus to make smart decisions.

Will a small firm have credibility with your investors and strategic partner?

Absolutely because experience counts.  And I use specialized databases and state-of-the-art analytical tools for projects involving patents, technology assessment, licensing, freedom-to-operate and due diligence.  Also, my network of smart and committed experts can provide external legal and business guidance for my clients who don’t already have those resources.

Perhaps you have issues with delays in negotiating a technology transfer or sponsored research agreement, or have concerns about NIH related rules and policies.

I directed the technology transfer office at NIH for five years. And I have many years of experience in helping clients negotiate federal laboratory CRADAs and university sponsored research agreements, as well as patent license and clinical agreements from government and academia. This work includes preparing license applications that greatly accelerate processing time and successfully resolving disputes and appeals on adverse decisions.