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. 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 early-stage biotechnology companies with little or no full-time staff, including "virtual" companies, may find it advantageous to outsource the company's management 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 30 years experience with biotechnology intellectual property protection, having managed patent programs in academia and industry. Significant experience negotiating license, option, sponsored research agreements, and related agreements on behalf of Harvard-affiliated teaching hospitals and within the University of Massachusetts system. As a consultant, Dr. Glass has assisted several biotechnology and nanotechnology companies on several aspects of licensing and patent management. Dr. Glass was awarded the Certified Licensing Professional (CLP)TM certification in July 2008 and the Registered Technology Transfer Professional (RTTP) certification in November 2013. Please click here to view Dr. Glass's curriculum vitae.