Wolf, Greenfield & Sacks, P.C. | 600 Atlantic Avenue | Boston, Massachusetts | | fax | wolfgreenfield.com Communicating Intellectual Property How to Share the Crown Jewels While Preserving Rights June 11, 2009

© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved. 2 Panelists Pam Ariniello, Associate General Counsel, Intellectual Property, Dana- Farber Cancer Institute Kerry Flynn, Vice President, Intellectual Property, Shire Pharmaceuticals Mary Porter, Chief Intellectual Property Counsel, Cabot Corporation

© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved. 3 Panelists (cont) Pat Granahan, Shareholder, Biotechnology Group, Wolf Greenfield Ed Walsh, Shareholder, Electrical & Computer Technologies Group, Wolf Greenfield Facilitated by Allen Rugg, Shareholder, Litigation Group, Wolf Greenfield

© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved. 4 Tension Between Policy and Reality  Confidentiality of all non-public IP and related communications  Real world realities require disclosure:  Employees, suppliers, advisers, etc.  Research related communication and collaborations  Commercial deals: financings, purchases and sales

© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved. 5 Goals  Avoid inadvertent disclosure  Affirmative decisions to disclose  Appropriate protections

© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved. 6 Real World Needs to Disclose  Creation of IP assets  Conversation: basic research tool; electronic  Cooperation  Collaboration  Commercial realities  Financing due diligence  Mergers and acquisitions  IP valuation: strengths and flaws  Litigation evaluation and risks  Disputes

© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved. 7 Tools  Patenting  Trade secrets  Policy and culture of protection  Employment contracts and policies  Agreements: non-disclosure, joint development, etc.  Attorney-client privilege

© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved. 8 Attorney-Client Privilege: Requirements  Communication  Between client and counsel  Intended to be and, in fact, confidential  Purpose of obtaining or providing legal advice

© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved. 9 Waiver of Privilege  Upon disclosure to 3 rd party  Extends to subject matter  Common interest exception:  No waiver if parties share “substantial identity of legal (not commercial) interest”  Factors:  Delay disclosure as long as possible  Document common legal interest  Preserve confidentiality: limit copies, number of recipients, and require return

© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved. 10 Key Topics for Discussion  Policy and culture of confidentiality  Inadvertent disclosure: what are risks?  Inadvertent receipt of ideas from 3 rd party  Employees  University research institution  Non-disclosure agreements  M&A and financial diligence  Public company specific issues

© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved. 11 Contact Wolf Greenfield is a full-service intellectual property law firm that builds and enforces strong IP portfolios, assists businesses to manage IP risks, provides IP licensing and deal-making services, and defends them from suit. For questions and requests, please contact Jay Wager, Associate Director, Business Development, at or

Wolf, Greenfield & Sacks, P.C. | 600 Atlantic Avenue | Boston, Massachusetts | | fax | wolfgreenfield.com Communicating Intellectual Property How to Share the Crown Jewels While Preserving Rights June 11, 2009