* Expert Integrated Legal Services at Reasonable Cost *Comprehensive Worldwide Experience in Biotechnology IP Acquisition & Business Development *Counseling & Strategy for Successful Execution *Intellectual Property, Agreements, Licensing *Structuring, Funding, Tax, & Commercial G. Kevin Townsend September 13, 2010
Intellectual Property Group BERENBAUM WEINSHIENK's 3 principal IP attorneys bring > 45 years in house and law firm experience in business development and legal counseling relating to worldwide intellectual property, licensing, agreements, and related business strategy and legal support, for the development, commercialization, and licensing of products and services involving targeting the most relevant business opportunities in life sciences and high technology markets. COUNSELING AND STRATEGY: The Intellectual Property Practice Group counsels a wide variety of clients ranging from individuals and small start-up & non-profit entities to large national and multi-national corporations and research institutions such as universities. INTEGRATED LEGAL SERVICES: Because intellectual property issues often interrelate with other aspects of a client’s business, the Intellectual Property Practice Group provides integrated legal services drawing on the experience and resources of our transactional, M&A, VC, securities, tax, employment, and litigation practice groups to provide our clients with the most appropriate legal and business advice to achieve the best results in each case.
Intellectual Property Group <ul><li>Providing counseling , strategy, and IP and legal due diligence, in support of: </li></ul><ul><ul><li>Contract and other development, research, manufacturing, and clinical service agreements, </li></ul></ul><ul><ul><li>Licensing and technology transfer; and </li></ul></ul><ul><ul><li>Mergers and acquisitions; </li></ul></ul><ul><li>Licensing of or otherwise transferring of intellectual property, including technology transfer; </li></ul><ul><li>Patentability, freedom to operate and infringement and validity analysis and opinions; </li></ul><ul><li>Preparation and prosecution of patents in all technology areas; </li></ul><ul><li>Protection of trade secrets and registration of copyrights; </li></ul><ul><li>Pre-litigation, dispute resolution, and litigation concerning patent infringement, trademark and trade dress infringement, misappropriation of trade secrets, and unfair competition. </li></ul>
Relevant Experience of Berenbaum Weinshienk’s Intellectual Property Group: Patent Prosecution, Oppositions, and Appeals <ul><li>Managed > 400 biotechnology patent families worldwide in > 40 countries; </li></ul><ul><li>Issued > 2000 biotechnology patents worldwide ; </li></ul><ul><li>Issued > 500 US biotechnology patents; </li></ul><ul><li>Prosecuted > 1000 US biotechnology patent applications; </li></ul><ul><li>Issued > 250 EU biotechnology patents; </li></ul><ul><li>Prosecuted more than 500 EU biotechnology patent applications; </li></ul><ul><li>EU Oppositions/ Appeals: Successfully defended and opposed > 25 granted EU biotechnology patents through Opposition and Appeals process; </li></ul><ul><li>Appealed more than 250 US patent applications; </li></ul><ul><li>Worked on more than 15 biotechnology interferences; and </li></ul><ul><li>Worked on more than 25 biotechnology reissues & reexaminations. </li></ul>
Intellectual Property Group The principal attorneys in the Intellectual Property Group are: - Peter B. Scull; - K Kalan; and - G. Kevin Townsend, With > 45 years of combined legal experience. All three attorneys are registered to practice before the U.S. Patent and Trademark Office and are licensed in Colorado, Arizona (Peter), California (K), and Pennsylvania (Kevin). Additionally, Fran Cetrulo, Larry Martinez, and Gene Sprague are highly experienced and prominent attorneys involved in providing integrated legal services with Intellectual Property matters.
G. KEVIN TOWNSEND: Kevin is a 20+ year patent and licensing attorney working: - > 10 years in house at Centocor Ortho Biotech/Johnson & Johnson and Eli Lilly, and - > 10 years in law firms, including Hogan Lovells; Foley and Lardner; and Sterne, Kessler, Goldstein and Fox. Kevin has worked primarily in the biotechnology and pharmaceutical sector, but also has significant experience with chemical, device and computer based inventions. Kevin has solely managed product, technology, and business development; IP acquisition, defense and enforcement; regulatory; and related agreements and legal aspects, for > 20 major product (>$500M) portfolios in all stages of development, including Centocor/J&J’s Remicade ($4.8B),™ Eli Lilly’s Forteo,™ and Centocor/J&J’s Simponi.™ Kevin has conducted and managed attorneys on > 100 major (>US$100M) product and company transactional and IP due diligences, negotiations and agreements, as well as > 1000 contract and agreement due diligence, negotiations and drafting.
Kevin has worked on all types of > 1000 agreements , including due diligence, negotiations and drafting of contracts, licensing and acquisitions, relating to: services; asset sales and licensing; research; development; collaborations; IIS studies; pre-clinical, clinical, master research and clinical, and phase IV agreements; CRO, institution, government, military, physician, and consortium: research, consulting, collaboration, services, and master agreements; government, military, academic and commercial licensing and technology transfer, manufacturing and co-manufacturing, marketing and co-marketing, commercialization, and in- and out-licensing; and IT support, systems and software. Kevin’s dispute resolution, litigation, transactional, IP, and regulatory experience includes management counseling, mediation, arbitration, litigation, due diligence, agreements, transactions, regulatory counseling, as well as IP acquisition and appeals, in support of small, medium & global companies in the United States, Europe & Asia.
Before becoming a patent attorney, Kevin studied chemistry, biochemistry and molecular biology in undergraduate and graduate school and then worked as a molecular biologist at the NIH. Kevin studied DNA repair & cytochrome p450 expression, characterization, enzymology & monoclonal antibody inhibition in recombinant vaccinia, retrovirus & baculovirus expression systems, purification, renaturation, and analysis using spectroscopy, protein expression, enzyme kinetics, and nucleic acid analysis. Kevin drafted, directly managed prosecution, and initially managed the litigation of US patent 7.070,775, asserted by Centocor against Abbott that resulted in a record US$1.67 billion infringement verdict against Abbott in the Eastern District of Texas (07-cv-00139, E.D. Texas (Marshall) 2009). Kevin has personally drafted >500 utility, design and plant patent, trademark, and copyright applications, prosecuted >1000 US patent, trademark and copyright applications; managed worldwide prosecution for >500 patent families, and issued >2000 patents worldwide.
Kevin has worked on > 30 EU and Japanese oppositions and appeals, multi-jurisdictional arbitrations, litigations, IP license dispute litigations, preliminary injunctions, nullity actions, and litigations. Kevin has also worked on: - > 15 patent interferences, including District Court & Federal Circuit appeals (such as the Fiers v. Sugano biotechnology Federal Circuit appeal); and - > 50 appeals to the Board of Patent Appeals & Interferences and the Federal Circuit, and >15 reexaminations, & 10 reissues. Kevin has presented, managed & developed > 50 in house & public presentations relating to various aspects of US & international transactional, patent, regulatory, & related IP issues, including biotechnology, pharmaceuticals, and medical devices.
PETER B. SCULL: Peter's practice has been focused in the general area of Intellectual Property (IP) law for over 15 years. A majority of his practice has been related to medical technologies, including work with medical device, biotech and pharmaceutical inventions. As a registered patent attorney, Peter continues to draft and prosecute patent applications in a variety of technical areas, including mechanical, chemical, computer, and electronics technologies. Peter continues also to be involved in providing services in the areas of trademarks, trade secrets, and copyrights as well as in licensing, litigation support and due diligence.
Peter provides client counseling and opinion preparation in any of these intellectual property regimes. Peter has participated in the prosecution of hundreds of applications for patents, trademarks and copyrights. Defended patent and trademark applications in inter partes administrative interference and opposition proceedings. Peter also has provided licensing, due diligence and infringement litigation support in a variety of multi-million dollar matters. Peter has developed an extensive international practice providing IP services for domestic clients seeking to enter international markets as well as providing American protections for extra-nationally based clientele.
Peter has worked with a major multi-national corporation to provide in-house intellectual property guidance and procurement services in the medical device, pharmaceutical and health services fields. Peter has provided intellectual property services to multiple universities, particularly in the acquisition of patents for cancer drugs, inter alia. Peter has provided presentations and counseled numerous start-up businesses, entrepreneurs and university groups on the basics of Intellectual Property protection.
K KALAN: As a shareholder at Berenbaum, K Kalan practices with the firm's intellectual property, business transactions, and real estate groups. K assists clients with patent matters, including research, drafting, and filing. K counsels clients on all aspects of copyright and trademark protection, including trademark selection, filing, and prosecution. K has experience successfully representing clients in connection with domain name proceedings, and prosecuting and defending intellectual property disputes before state courts, federal courts, and the Trademark Trial and Appeal Board.
K's real estate practice involves transactional work ranging from general commercial real estate and financing, including sales and acquisitions of real estate, to development of residential communities and common interest community matters. K was admitted to the Colorado Bar in 2000, the California Bar in 2001, and was admitted to practice before the United States Patent and Trademark Office in 2002. K is a member of the Colorado and Denver Bar Associations and the Colorado Bar Association Patent, Trademark & Copyright Law Section and Real Estate Law Section. In law school, K was the Editor-in-Chief of the University of Colorado Law Review, publishing a Comment entitled "Property Rights, Individual Rights, and the Viability of Patent Law Systems."
After graduating from law school, K clerked for the Honorable Chief Judge Janice B. Davidson of the Colorado Court of Appeals. K’s scientific research experience includes, e.g.,: - Fourier-Transform infrared spectroscopy reference work; - Enantioselective epoxidation using salen(manganese) catalysts; - Synthesis of deuterated F-MOC glycine as part of Alzheimer’s Disease research; and - Molecular switching of receptors and signaling proteins.
CONTACT INFORMATION G. Kevin Townsend Of Counsel Berenbaum Weinshienk PC Direct: 303-592-8372 Cell: 609-240-7589 [email_address] www.bw-law.com