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Presentation title Date
[Making]Winning Combinations
Effective Collaboration Between IP
Counsel and BD Professionals
Len Smith
BioNetwork West 2009
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Winning Combinations Smith BioNetwork West 2009 Slide no 2October 6, 2009
A Different Kind of Talk
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Winning Combinations Smith BioNetwork West 2009 Slide no 3October 6, 2009
Are We Aligned?
Number of deals vs.long term results
Natural counteraction
Long term connection to co.
Relationships
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Winning Combinations Smith BioNetwork West 2009 Slide no 4October 6, 2009
Disposition of a Winning Team
Looking for Win/Win?
Most effective long term Most deals are not static matters(collaborations, co-pros)
Organizations that deal once, usually deal again
Its a small world (and word gets around)
Win/Win Team?
Blood hungry litigators, pushovers Creativity a plus (expand the pie)
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Winning Combinations Smith BioNetwork West 2009 Slide no 5October 6, 2009
Subject Matter Competencies
Basic Team
IP counsel, general legal counsel, BD, management (?)
Alliance management, an operations champion (scientificinput)
Extended Team
Internal Tax, Insurance, Clinical/R&D, Marketing
External
Local/specialist counsel (China)
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Winning Combinations Smith BioNetwork West 2009 Slide no 6October 6, 2009
Worth the Money and Hassle
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Winning Combinations Smith BioNetwork West 2009 Slide no 7October 6, 2009
Understanding IP Counsel (Part 1)
Just Because Shes ParanoidDoesnt Mean Someone is NotOut to Get Her
Contracts are made fordivorces, not marriages
and break-up is likely
What you say can (and will) beused against you
Long term stakes are high
People will remember your
failures (more than your wins)
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Winning Combinations Smith BioNetwork West 2009 Slide no 8October 6, 2009
What are We Here For?
Typical Deal Drivers
Exclusivity
IP, Regulatory
Technology
Aims Getting it
Getting around it
Know What the Deal is About
BD its usually about IP
IPC IP isnt everything
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Winning Combinations Smith BioNetwork West 2009 Slide no 9October 6, 2009
Conduct DD Early and Often
Public discussion &investigation
Upfront DD
Post CDA, Pre-Agreement(TS) DD
Avoiding contamination Secure internal assets
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Winning Combinations Smith BioNetwork West 2009 Slide no 10October 6, 2009
IP Counsel Winning Strategies
Be prompt
Keep it simple, clear
Use no sparingly Provide options
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Winning Combinations Smith BioNetwork West 2009 Slide no 11October 6, 2009
Winning Strategies - Negotiation
Plan your work, work your plan
Term sheets
How binding?
How specific?
Unique strengths of IPCin negotiation
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Winning Combinations Smith BioNetwork West 2009 Slide no 12October 6, 2009
Understanding BD
Negotiation is a skill Most lawyers
do not really get it
IP Counsel shouldlearn to think in terms of
Expanding the pie
Anchoring Use of higher
authority appeals
Reciprocity
Nibbling
IPC is innately good at Fall back/contingency
planning
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Winning Combinations Smith BioNetwork West 2009 Slide no 13October 6, 2009
Play Nice Together
Present a unified front, always
Make each other look good IP counsel will be on front line of alliance management
BD is the face of the company
BDs goals matter to BD (and Management) and should matter to IPC
Allow people to grow and change
Allow for break-outs and other communication tools
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Winning Combinations Smith BioNetwork West 2009 Slide no 14October 6, 2009
Drafting
Expectations Your IP person probably has a day job
Let IP know what kind of BD person you are
Process Whos going to control the draft?
Always try to, if possible BD are not attorneys, but can give good input
More eyes OK as long as process clear
Whos responsible for policing the agreement?
Balance
The words really do matter, but so does the deal!
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Winning Combinations Smith BioNetwork West 2009 Slide no 15October 6, 2009
Develop Strategies for Common Risks
Patent term restoration
Control, compensation
Pending Claims
Notice periods
Too long for IP litigation Injunction, Hatch-Waxman, etc.
Standing for suit
Field licensing, limits on licenses
Bankruptcy
Preservation not really exclusive
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Winning Combinations Smith BioNetwork West 2009 Slide no 16October 6, 2009
After the Deal
Post mortem analysis?
How does the organization learn?
How is success measured (and when)?
Exclusion of bad deals by DD
Educate management to consider more than cost, time
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Winning Combinations Smith BioNetwork West 2009 Slide no 17October 6, 2009
Common Sense
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Winning Combinations Smith BioNetwork West 2009 Slide no 18October 6, 2009
Questions/Comments?
Thanks and Bon Apptit!
Len Smith
LSmt@NovoNordisk.com