Making Winning Combinations, LenSmithNovonordisk

8/8/2019 Making Winning Combinations, LenSmithNovonordisk

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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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Are We Aligned?

Number of deals vs.long term results

Natural counteraction

Long term connection to co.

Relationships


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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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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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Worth the Money and Hassle


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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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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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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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IP Counsel Winning Strategies

Be prompt

Keep it simple, clear

Use no sparingly Provide options


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Winning Strategies - Negotiation

Plan your work, work your plan

Term sheets

How binding?

How specific?

Unique strengths of IPCin negotiation


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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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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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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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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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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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Common Sense


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Questions/Comments?

Thanks and Bon Apptit!

Len Smith

[email protected]

Making Winning Combinations, LenSmithNovonordisk

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