ABOUT
Tom is a US/Canadian intellectual property (IP) and transaction attorney with 25+ years’ experience in Global IP Asset Management
TECHNOLOGY
-
Small molecule NCEs
-
Biologics
-
Generics and biosimilars
-
Research tools and therapeutic targets
-
Biofuel and biomass derived chemicals
EXPERIENCE
-
15+ years in seed stage pharma/biotech
-
10+ years in global pharma (Novartis)
CLIENTS
-
VC funds seeking in-depth, versatile and fast results
-
Start-up biotechs with complex early stage IP portfolios
...Tom cuts through minutiae to distill to pragmatic matters important for a business investment decision, allowing us to distinguish those IP-related issues which can be resolved versus the issues that are investment no-goes.
Managing Director, Corporate VC
US AND CANADIAN REGISTRATIONS
State Bar Registration (US)
Bar Admission (Canada)
-
New York, 1995
-
Massachusetts, 1995
-
Ontario (Canada), 1994
-
British Columbia (Canada), 1998
-
US Patent and Trademark Office, 2005-2012
Education
Professional Associations
-
Juris Doctor (J.D.)
Dalhousie University, 1992
-
Master of Science (Biochemistry)
Dalhousie University, 1990
-
Bachelor of Science (Honours) Queen's University, 1987
-
Licensing Executive Society (USA/Canada)
-
IP Institute of Canada
-
Life Sciences British Columbia
-
World Biofuel Association
-
Canadian Bar Association
* Insured All Jurisdictions
AREAS OF PRACTICE
-
Securing patents, protecting know-how
-
Freedom-to-operate analysis
IP due diligence, agreements and negotiations for:
-
Licensing
-
M&A
-
Financing (Equity and debt)
-
Patent avoidance/Design-around strategy
-
Multi-country IP litigation assessment
-
International trade sanctions (IP aspects)
-
Multi-country IP licensing strategy
-
Regulatory data protection for pharmaceuticals and chemicals
-
IP enforcement strategy
-
Comparative analysis of national IP systems and policies
-
Pharmaceutical life-cycle management/Generic entry planning
-
Non-practicing entity (NPE or “patent troll”) defence and strategy
-
Royalty-rate comparables for license agreements and damage/settlement calculations
Global tax and transfer-pricing (IP aspects)
-
Global structure for beneficial/legal/registered ownership of IP assets
-
Global structure for internal supply chain licensing of IP assets
-
Litigation support regarding IP ownership in transfer-pricing arrangements
-
Dispute resolution (mediation, arbitration, litigation) for technology agreements
-
Portfolio cost savings and optimization
