Newport Beach, California, United States
Highly accomplished General Counsel with over 20 years of intellectual property expertise in the pharmaceutical, medical device and healthcare sectors. A successful career characterized by front-line positions in top international law firms, leading to a General Counsel position at a publically traded biopharmaceutical company. Displays strong interpersonal skills and the ability to gain the trust and respect of others. Licensed to practice in Colorado and before the U.S. Patent and Trademark Office. AREAS OF EXPERTISE Commercial agreements • Transactional agreements • Corporate governance • Intellectual property • Patent prosecution • Strategic business/IP planning • Due diligence • Opinion work • Patent portfolio management • Employment law
Serves as advisor to the CEO and executive team on contractual matters, IP due diligence and all matters related to domestic and international intellectual property.
Managed all legal affairs of the company. Served as legal advisor to the CEO and executive team on contractual matters, legal governance, IP due diligence and all matters related to domestic and international intellectual property. • Optimized and structured a licensing arrangement, wherein the resulting agreements increased revenues by $60M. • Drafted and negotiated a variety of commercial agreements (e.g., manufacturing, clinical trial, supply, distribution, confidentiality, material transfer and consulting). • Achieved an outstanding internal corporate rating by negotiating a settlement of concerning the sale of auction rate securities. • Guided company to a Notice of Dismissal in an employment suit resulting in significant savings. • Management and oversight of outside counsel. • Supervised two human resources professionals and seven facilities team members. • Provided counsel concerning corporate governance matters.
Developed, implemented, and managed the direction of an IP portfolio within a publically traded pharmaceutical company. • Established and maintained an intellectual property docketing system utilizing PATTSY software to manage company’s comprehensive portfolio, which encompassed over 500 active worldwide patents and trademarks, as well as transactional agreements. • Devised strategy that resulted in the European Appeals Board reinstating company’s core DNA delivery patent in Europe. • Developed litigation strategy for monetization of company’s intellectual property and presented to Board of Directors. • Identified and terminated license agreements that the company was no longer pursuing, achieving a savings of $115,000 in annual license fees. • Responsible for yearly savings (approximately 20% per year reduction) in both the general legal and IP budgets.
As a partner in the Biotechnology and Chemistry Practice, provided counsel on the identification of patentable features of research, evaluated patent portfolios, and prepared freedom to operate opinions. • Drafted and prosecuted several dozen applications in the U.S., and directed prosecution before foreign patent offices on behalf of corporate, university and government clients. • Prepared intellectual property licensing agreements. • Trained and supervised associates, patent agents, and technical advisors.
As a member of the Intellectual Property Group, developed a $1 million + book of business. Counseled and represented both corporate and university clients in intellectual property protection strategies in the fields of biotechnology, pharmaceuticals, chemicals, proteins, biological and chemical processes and medical devices. • Patent attorney for several notable research institutions and medical device companies including Johns Hopkins University, Harvard University and Medtronic, Inc. Sourced by Medtronic to serve as lead patent counsel for Medtronic Perfusion Systems.
Built a successful practice providing legal counsel in the areas of intellectual property law, corporate law, and litigation. • Founding Board Member of the Colorado BioScience Association (CBSA), formerly the Colorado Medical Device Association. CBSA is a not-for-profit corporation providing services and support to the regional bioscience community through advocacy, resources and opportunities for collaboration.