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Wolf, Greenfield & Sacks, P.C. | 600 Atlantic Avenue | Boston, Massachusetts 02210 | 617.646.8000 | 617.646.8646 fax | wolfgreenfield.com Communicating Intellectual Property How to Share the Crown Jewels While Preserving Rights June 11, 2009
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© 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
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© 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
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© 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
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© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved. 5 Goals Avoid inadvertent disclosure Affirmative decisions to disclose Appropriate protections
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© 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
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© 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
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© 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
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© 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
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© 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
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© 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 617.646.8368 or jwager@wolfgreenfield.com. www.wolfgreenfield.com
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Wolf, Greenfield & Sacks, P.C. | 600 Atlantic Avenue | Boston, Massachusetts 02210 | 617.646.8000 | 617.646.8646 fax | wolfgreenfield.com Communicating Intellectual Property How to Share the Crown Jewels While Preserving Rights June 11, 2009
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