Licensing and Academic Relations
Services Offered for Biotechnology, Device and Pharma Companies

Small to midsize biotechnology companies can often benefit from outsourced patent and licensing expertise. Unlike large companies with full-time patent and licensing staff, in small companies responsibility for identifying patentable inventions and writing patent disclosures often falls to the Research Director or to individual scientists. Once a patent portfolio gets too big, it becomes a significant burden on the time and efforts of the scientific staff, and delegating the excess work to patent attorneys can run up large legal fees. And while licensing is commonly handled by Business Development staff, these individuals are often preoccupied with out-licensing and partnering, and often cannot devote sufficient time to in-licensing and academic relations.

Many biotechnology companies today begin life as "virtual" companies, with little or no full-time staff, and outsource many of their administrative functions. Perfect candidates for outsourcing are the company's handling of its core patent applications, which are generally licensed in from academic sources, and the management of such relationships with academic laboratories.

Services for Corporate Clients:

Management of In-House Patent Portfolios

D. Glass Associates can assist small to midsize biotechnology companies, including "virtual" companies, with intellectual property protection, liaison to patent attorneys, and strategic advice on patent matters, in the following ways:

• Monitor scientific developments within the firm and at academic partners' labs to identify patentable inventions.
• Work with company scientists to prepare written disclosures of inventions.
• Work with outside attorneys to prepare draft patent applications and facilitate attorney-inventor interactions.
• Help establish and implement corporate intellectual property policies.
• Maintain corporate files of patent matters and track relevant deadlines.
• Monitor a company's in-house portfolio, to provide strategic guidance and direction.
• Analyze the strength of proprietary or competing intellectual property, as part of strategic planning efforts.

Business Development, Licensing, and Liaison to Academic Institutions

DGA can also help biotechnology companies by managing their activities regarding licensing (both in-licensing and out-licensing), academic laboratory relations, and related matters, in the following ways:

• Negotiate agreements for academic alliances, including license and option agreements, sponsored research agreements, confidentiality and materials transfer agreements.
• Assist or conduct negotiations for corporate alliances, including out-licensing or in-licensing of intellectual property, strategic partnerships and research collaborations.
• Monitor and provide strategic direction for patent portfolios in-licensed from academic or corporate partners.

Qualifications

David Glass has over 20 years experience with biotechnology intellectual property protection, having managed patent programs in academia and industry. Significant recent experience negotiating license, option, sponsored research agreements, and related agreements on behalf of a major Boston teaching hospital, where he has successfully negotiated over 100 license and option agreements and other technology transfer contracts. As a consultant, Dr. Glass has assisted several biotechnology and nanotechnology companies on several aspects of licensing and patent management.

Please click here to view Dr. Glass's curriculum vitae.