ABOUT
Tom is a US/Canadian intellectual property (IP) and transaction attorney with 30+ years’ experience in Global IP Asset Management
TECHNOLOGY
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Small molecule NCEs
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Biologics
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Generics and biosimilars
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Research tools and therapeutic targets
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Biofuel and biomass derived chemicals
EXPERIENCE
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20+ years in seed stage pharma/biotech
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10+ years in global pharma (Novartis)
CLIENTS
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VC funds seeking in-depth, versatile and fast results
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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)
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New York, 1995
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Massachusetts, 1995
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Ontario (Canada), 1994
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British Columbia (Canada), 1998
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US Patent and Trademark Office, 2005-2012
Education
Professional Associations
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Juris Doctor (J.D.)
Dalhousie University, 1992
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Master of Science (Biochemistry)
Dalhousie University, 1990
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Bachelor of Science (Honours) Queen's University, 1987
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Former Chair, Patented Medicine Prices Review Board (2023-2025)
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IP Institute of Canada
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IP Trade Policy Committee​
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Indigenous Knowledge IP Committee
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Life Sciences British Columbia
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Commissioner, Vancouver Park Board
* Insured All Jurisdictions
AREAS OF PRACTICE
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Securing patents, protecting know-how
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Freedom-to-operate analysis
IP due diligence, agreements and negotiations for:
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Licensing
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M&A
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Financing (Equity and debt)
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Patent avoidance/Design-around strategy
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Multi-country IP litigation assessment
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International trade sanctions (IP aspects)
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Multi-country IP licensing strategy
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Regulatory data protection for pharmaceuticals and chemicals
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IP enforcement strategy
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Comparative analysis of national IP systems and policies
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Pharmaceutical life-cycle management/Generic entry planning
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Non-practicing entity (NPE or “patent troll”) defence and strategy
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Royalty-rate comparables for license agreements and damage/settlement calculations
Global tax and transfer-pricing (IP aspects)
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Global structure for beneficial/legal/registered ownership of IP assets
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Global structure for internal supply chain licensing of IP assets
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Litigation support regarding IP ownership in transfer-pricing arrangements
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Dispute resolution (mediation, arbitration, litigation) for technology agreements
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Portfolio cost savings and optimization
