Transformative’s Principal Counsel, Len Smith, took the stage with other experts in intellectual property last week to discuss recent trends and best practices relating to intellectual property ownership and due diligence.
The Summit was well attended by several seasoned leaders in IP, especially in the life sciences. Dr. Jennifer Sieczkiewicz from Biogen, Dr. Thomas F. Poché, Ph.D. of Allergan, and outside counsel Ha Kung Wong kicked the conference off with a focus on developing a due diligence strategy and checklist. Next up, Donna Meuth of Eisai, Mathew Blischak of Teva, and conference co-chair Adda Gogoris evaluated recent changes in the law and the impact of those changes on IP due diligence. Len’s panel followed, focusing on uncovering red flags in IP ownership and inventorship. Len was joined by Catherine Eckenswiller, in-house counsel at VBI Vaccines, and outside counsel Jeremy Cubert. Some of the issues Len’s panel focused on included the complexities of patent ownership in community property states, ensuring that assignment of rights is done at the right time, with the right provisions, and with the correct recordation practices. Unfortunately, many companies are not handling IP due diligence matters in an optimal, creating valuation problems downstream, even for otherwise valuable intellectual property portfolios.
Many additional experts also presented in the conference, including Kimya Harris of ImmunoGen, Jennifer Johnson, of Blaze Bioscience, Forrester Liddle of Jounce Therapeutics, and venture capitalist Ralph W. Carmichael, Chairman & Chief Executive Officer, BŌNWRx Ltd. The audience was sophisticated and the discussions very interactive. Other issues of focus at the discussion included harmonizing diligence with deals, avoiding confidential information/trade secret problems, harmonizing regulatory and patent exclusivity, and efficiently and effectively staging the due diligence process.
The Summit stood out through its structure of using a detailed case study to provide a backdrop and common framework for the agenda. It will be interesting to see if this is a model that is adopted for future events.
The discussions at the conference validated the need for the kind of services that Transformative is providing, including its more sophisticated “products” for protecting confidential information assets and conducting due diligence.
Transformative wishes to congratulate Julie Kurzrok and the team at ACI for a successful Summit and thanks ACI for providing Transformative with the opportunity to contribute to the conversation on these important issues.