Pharmaceutical Patent Expert Opines on Commercial Licensing Dispute


Patent Expert WitnessThis case involves a commercial dispute between two major pharmaceutical companies with regard to a patent license. An expert with career experience in licensing databases and other public resources was sought to comment on licensing practices in the pharmaceutical industry.

Question(s) For Expert Witness

  • 1. Please briefly describe your work as it relates to patent licensing in the pharmaceutical industry.

Expert Witness Response E-113877

Expert-ID: E-113877

I have been involved in pharmaceutical patent, technology, and product licensing activities as both a pharmaceutical business development executive, in-house legal counsel, and independent consultant for more than 25 years. I have been involved in drafting and negotiating commercial and patent license agreements in numerous deals involving major pharmaceutical companies, development stage companies, and academic institutions during that time. I have worked for a major pharmaceutical company, and have consulted with and served on the board of directors of a number of smaller, development stage companies, both public and private – domestic and foreign. I have been called upon once as an expert witness on a prior patent licensing dispute involving a major pharmaceutical company and a major academic institution. I was asked to provide my opinion on the typical and most reasonable interpretation of some common licensing provisions in the agreement at issue. I provided extensive written evaluation and interpretation of many common licensing provisions that were in dispute.

Expert Witness Response E-116738

I have been actively engaged in licensing for approximately 30 years. As a trainee in the patent department of a major pharmaceutical company, I supported the BD group, primarily in global out-licensing their monoclonal antibody technology and cell lines. After graduating from law school and passing the patent bar, I served as a patent attorney for another large pharmaceutical company. I subsequently assumed the role of Counsel to Business Development in which I reviewed several existing agreements, and drafted amendments, modifications (gov. contracts) and termination agreements, reporting directly to the global heads of Legal Affairs and Corporate Development. I also reviewed, negotiated and drafted in-, out-, and cross-license agreements. By the time of my retirement, I had been promoted to VP, Legal Affairs, General Counsel and Head, Acquisitions and Licensing Transactions. I led a team of 4 geographically dispersed senior attorneys engaged in M&A and complex licensing deals. As the lead attorney on several such deals, I directly engaged in strategy, negotiations, drafting and finalizing the agreement, and ensuring compliance thereafter. I also reviewed existing agreements to verify that all licensees were meeting their obligations under respective agreements. I played a supporting role in oppositions and interferences as well as patent litigation and contract disputes. I assumed a lead role in arbitrating one dispute and mediating another. I have also negotiated and drafted cross-license and settlement agreements stemming from patent infringement litigation.

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