The case involves a licensing dispute centered in the state of Georgia involving the formulation and testing of a drug that treats neurologic conditions. The drug is a combination of two existing medications, which have been combined into a single therapy. The patent holder and manufacturer of these existing medications claimed that they should receive a greater amount of royalty payments for the new drug. The manufacturer of the new therapy has claimed that the royalty and licensing payments made to the original inventor of the component drugs are sufficient.
Question(s) For Expert Witness
- 1. Do you have experience with biomedical patent licensing and negotiation?
- 2. Are you a Certified Licensing Professional (CLP) and/or a Registered Technology Transfer Professional (RTTP)?
- 3. Have ever you served as an expert on a matter involving pharmaceutical intellectual property?
Expert Witness Response E-028787
I have over 20 years of experience in biomedical patent licensing and negotiation. I am a CLP. I have served as an expert on pharmaceutical IP as chair of a large corporation’s IP Committee, and I have experience directing Pharma IP due diligence for in- and out-licensing of patents. Regarding licensing, I have prepared and advised rebuttals including differentiating claims from art cited as overlapping or preventing freedom to operate. The bulk of my licensing and intellectual property management and optimization experience is in the CNS-psychiatry and neurology-space. I am an IP strategist, now consulting with biotech companies and research institutions to strengthen, expand, and license their IP portfolios.
Expert Witness Response E-029098
I have experience with over 100 biotech and pharma patent licensing deals. I have over 18 years of experience in intellectual asset negotiation and management. I am CLP certified and my application for RTTP is underway. I have not served as an expert witness in a court case but do private consulting on licensing transactions and am the current VP for Professional Development for AUTM, the global Association of Academic Technology Transfer Professionals. There, I help lead and coordinate all of our educational training, including those relating to licensing.