Understanding and Managing IP for Successful Collaboration - Essential Knowledge and Perspectives

Webinar hosted by Houston Chapter

Tuesday, October 26, 2021

(Registrations accepted until 10/26/2021)

1:00 pm - 2:00 pm Eastern

12:00 pm - 1:00 pm Central

11:00 am - 12:00 pm Mountain

10:00 am - 11:00 am Pacific

Program:

Collaboration fuels innovation, and innovation is protected by IP rights. Understanding the IP basics and rationally managing IP strategies when working with others are essential for a fair and successful collaboration. Please join this LES-Houston Chapter panel discussion to learn about how patent ownership is determined in a collaboration, why a joint IP development agreement might be needed, and what IP expectations cultivate productive academic-academic and academic-industry collaborations.

Texas CLE approved for 1.00 hour.

Speakers:

Frank Amini, Intellectual Property Attorney, Winstead PCS

Frank Amini is an intellectual property attorney at Winstead PC, a full service business law firm. Frank has substantial experience in patent prosecution, intellectual property licensing, intellectual property transactions, and intellectual property litigation.

As a registered patent attorney, Frank has written and prosecuted numerous patent applications in various technological areas, including materials science, nanotechnology, biotechnology, the life sciences, and the chemical arts. As a Certified Licensing Professional, Frank has drafted and negotiated numerous intellectual property license agreements in connection with the acquisition of commercialization rights for numerous technologies, including medical diagnostics, medical devices, fluid purification processes, software, and databases.

Frank has also drafted and negotiated numerous agreements related to technology transactions, including master services agreements, consulting services agreements, non-disclosure agreements, facilities use agreements, and asset purchase agreements.

Additionally, Frank has substantial experience in numerous intellectual property-related transactions, including preparation of freedom to operate opinions; rendering opinions regarding patentability and patent infringement; evaluation of the intellectual property portfolios of various companies and institutions in connection with mergers, acquisitions, lending, and capital investments; and devising intellectual property protection strategies.

Frank holds a B.A. in Microbiology from the University of Texas at Austin, a Ph.D. in Biological Chemistry from the University of Texas Southwestern Medical Center, and a J.D. from Chicago-Kent College of Law.

Terese Rakow, Senior Technology Manager, Baylor College of Medicine, Baylor Licensing Group

Terese joined Baylor College of Medicine in the licensing office in 1999 and works with very prolific inventors in Genetics, Molecular Physiology, Ophthalmology and Otorhinolaryngology. Terese manages an extensive portfolio of technology disclosures that include diagnostics, therapeutics and devices, playing a pivotal role in translating discoveries into products that improve patient outcomes. She has executed large number of out-licenses to industry partners, inter-institutional agreements with academic and other non-profit organizations, and service and platform access agreements. She has worked closely with colleagues in the sponsored programs group of Baylor’s Office of Research to ensure the management of resulting Intellectual Property from sponsored research and collaborative agreements is in alignment with the College’s mission. Terese serves as a mentor to the licensing team, advising the group on licensing matters and strategic partnerships leading to a high performing, efficient team. Terese has Bachelor’s Degrees in Biology and in Chemistry, and a Ph.D. in Genetics.

 

 

 

Moderator:

Q. Andy Guo, Membership Committee Co-Chair, LES Houston

Andy worked at the licensing office of Baylor College of Medicine from 2013 to 2019 and established a successful track record of executing license agreements to build academia-industry partnerships. Andy is now pursuing a legal career. He is a registered Patent Agent and attending law school at the University of Houston Law Center, where he also serves as an Articles Editor for the Houston Law Review. Andy spent the past two summers at Norton Rose Fulbright US LLP as a Summer Associate. He has accepted the firm’s return offer and is currently participating in its clerkship program. Upon law school graduation, Andy looks forward to joining Norton Rose Fulbright as a full-time Associate in 2022. Andy has a Bachelor’s Degree in Biological Science and a Ph.D. Degree in Translational Biology and Molecular Medicine.

 

LES Members Price: FREE

(LES International Members please contact info@les.org for a code)

Non-Members: $69

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