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Venture Intellectual Property

The American Lawyer 2008 IP Finalist


Industry Expertise:


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Venture Intellectual Property

Overview


Contact:   Mika Mayer

Leveraging the firm’s extensive experience in the life sciences industry, Morrison & Foerster’s intellectual property attorneys regularly assist venture capitalists and other life sciences investors with IP due diligence during the investment process.

The firm helps investors eliminate or ameliorate intellectual property risks, value their investments properly and identify opportunities to strengthen the intellectual property assets underlying the investment. The firm provides accurate and thorough freedom-to-operate assessments; evaluations of the strength of an investment’s proprietary technology position; and targeted advice to address key business risks and opportunities in an investment’s licensing and partnering portfolio, including possible litigation outcomes.

The VIP group offers to its investor clients:

  • A specialized group with a proven track record for performing investor side due diligence.
  • Extensive experience in evaluating and analyzing intellectual property portfolios.
  • Ability to perform detailed and complex freedom to operate analyses.
  • Extensive expertise in assessing business risks and challenges in licensing and commercial agreements, and practical advice to address them.
  • Strategic advice to best position the company for optimal partnering and transactional strategies.
  • Creative solutions to intellectual property impediments.
  • Access to experienced intellectual property litigators with insight into possible litigation outcomes.
  • Strategic advice on how to deal with overlapping patent positions.
  • Extensive experience in evaluating inventorship issues.
  • A deep understanding of the legal issues involving academia-originated technology.
  • Creativity in developing and strengthening patent and licensing portfolios.
  • Identification of possible licensing opportunities.
  • Use of graphic tools to facilitate identifying aspects of an investment’s technology that distinguishes it from its competitors.

Post-investment, the VIP group can also work with the investment’s intellectual property counsel, or if desired, with Morrison & Foerster LLP’s life sciences patent prosecution group to assist the investment in improving their intellectual property position by implementing the advice stemming from the due diligence.

The firm represents a diverse group of participants in the biotechnology, medical technology, pharmaceutical, health care industries, and greentech. Our involvement in the life sciences spans a broad range of sub specialties, including genomics, proteomics, combinatorial chemistry, protein chemistry, small molecules, pharmaceuticals, drug design, bioinformatics, developmental biology, drug delivery, nanotechnology, and material science. We also work with large diversified pharmaceutical companies and healthcare service companies.