The attorneys in the firm's Biotechnology & Life Sciences Industry Group are experienced in a broad range of disciplines and are well positioned to assist clients with the complex legal issues that affect biotechnology and life sciences companies and universities as well as research institutes engaged in life sciences' research. In fact, Jennings Strouss ranked #1 in Arizona in the field of Biotechnology Law by The Best Lawyers in America®, 2009 and 2010.
Our intellectual property attorneys represent clients in the biotechnology and life sciences industry on issues involving domestic and international protection of their intellectual property rights (including preparation and prosecution of patent applications and registration of trademarks), technology licensing, technology development and commercialization arrangements, research collaborations and technology transfer. They also assist clients who participate in technology standards organizations, evaluate intellectual property portfolios and provide counsel on other technology-related issues. Our intellectual property litigators help clients protect and enforce their intellectual property rights. We also defend our clients when intellectual property claims are raised against them.
Our corporate attorneys represent clients in the biotechnology and life sciences industry regardless of whether those clients are not-for-profit entities, emerging companies or multi-million dollar private or public companies. We provide assistance with corporate formation, funding and capital investment issues, corporate mergers and acquisitions, and related general business matters.
The attorneys in our government affairs area provide public policy advocacy services to our academic and private sector clients. Our lawyer/lobbyists have the know-how needed to help advocate for public funding, relocation and start-up incentives, favorable tax treatment, streamlined regulatory approvals, and other valuable public policy advantages.
The firm's Washington, D.C. office serves those clients with needs in the nation's capital, including those requiring closer proximity to the US Patent and Trademark Office, Food and Drug Administration and other agencies headquartered in Washington, D.C.
Intellectual Property
Jennings Strouss provides comprehensive intellectual property representation to our clients in the biotechnology, medical device, bioinformatics, pharmaceutical and other life sciences fields. These clients include research institutes, Universities and private sector companies in these fields.
We provide these clients with a broad range of intellectual property services, including the domestic and international aspects of the following: (i) the protection and maintenance of patents, copyrights, trademarks, trade secrets and other intellectual property rights, including, as applicable, the filing of applications for protection and registration of these rights; (ii) intellectual property licenses; and (iii) joint technology developments.
We also provide niche services not commonly offered by many other intellectual property law firms, including representing these clients concerning: (i) the creation of technology consortia and other multi-party development initiatives; (ii) sponsored research and other research collaborations; (iii) technology transfers of research from a university/research institute; (iv) other efforts to commercialize university/research institute technology; and (v) the formulation of internal intellectual property policies for universities/research institutes.
We have extensive experience representing both the private sector company as well as the university/research institute in many of these transactions. Our familiarity with both sides of these transactions enables our attorneys to understand the cultural nuances involved with transactions between private sector companies and universities/research institutes and thus, allows us to more effectively find the appropriate legal solutions.
Consortia and Other Multi-Party Development Initiatives
We have unique experience representing entities in the creation of, and participation in, technology consortia, standards-setting organizations, and similar multi-party development initiatives that collectively develop and promote technology guidelines, databases, protocols, standards, and similar works. We provide counsel concerning the many legal and business issues related to the creation of, and involvement with, consortia.
We help to form and administer consortia, including preparing governing documents for consortia with a goal of enhancing consortia members’ ability to participate in collaborative research and development and cooperatively use resulting guidelines/other work products and creating organizational structure for consortia, including structure of governing boards and working groups. We also create intellectual property policies governing ownership of intellectual property developed by consortia and licensing of patents and other intellectual property rights between consortia members.
For clients joining existing consortia, we evaluate business ramifications of consortia participation. We also analyze all legal issues associated with such participation, including such key IP issues as patent disclosures and patent licensing. We analyze issues concerning member contributions to consortia and prepare applicable agreements. We also assist consortia members in creating internal corporate policies governing that company’s consortia participation and conduct internal training sessions regarding these policies.
Corporate/Securities/Tax/Commercial
Our corporate, securities, tax, and commercial law attorneys provide corporate, tax, and other general business counseling to not-for-profit universities and research institutes. These attorneys also represent early and mid-stage companies in the biotechnology, bioinformatics, medical device and life sciences industries.
Our attorneys have experience representing a number of not-for-profit universities and research institutes (and their related entities, such as their foundations) concerning a broad range of corporate and commercial matters. Our services include tax counseling (including unrelated business income tax issues), creation of joint ventures, corporation formation (including the creation of affiliated not-for-profit entities), corporate governance, employee compensation and general business transactions.
We regularly counsel for-profit corporations on strategic legal issues, from business formation and corporate governance issues, through growth and financing transactions. We assist these corporate clients in virtually all of their corporate and commercial needs, including entity formation, corporate mergers and acquisitions, tax strategy, regulatory compliance, financial/capital funding transactions (including public and private securities offerings such as venture capital transactions, initial public offerings, and follow-on securities offerings) and other general commercial transactions. We have substantial experience in representing public companies on compliance with securities laws, including the periodic reporting requirements under federal securities laws. We also counsel the boards of directors and executive officers on corporate governance matters. In addition, our attorneys provide counsel regarding executive compensation issues and the design and structure of stock incentive plans.
Government Affairs/Public Advocacy
Companies as well as research institutes/universities in the biotechnology and life sciences fields all face the vagaries of the political process and the effects of public policy change. Our firm has experienced lawyer/lobbyists who help to navigate these “political waters” and assist our clients in positioning themselves appropriately to achieve their goals. Our lawyer/lobbyists also have the know-how needed to help advocate for public funding, clear regulatory hurdles, obtain favorable tax treatment, and secure other valuable public policy advantages to jump-start, and then sustain, research-related initiatives.
Representative Engagements
- Represent the US research laboratory of a Japanese technology company in its participation in a newly formed medical device consortium which is developing guidelines to enhance the interoperability of certain medical devices with other technologies
- Represent the Arizona operations of a leading life sciences research institute concerning public policy formation, collaboration efforts, and other public advocacy matters
- Represent two major Arizona universities(including the related technology transfer entity) concerning: (i) patent prosecution (applications) in the fields of medical devices, diagnostics and biotechnology, including new compounds and methods of treatment of disease; (ii) trademark and copyright counseling and applications; (iii) analysis of existing IP policies; and (iv) intellectual property litigation
- Represent a Sun City, Arizona-based medical research institute concerning (i) research collaboration agreements; (ii) patent prosecution (applications) involving new compounds, methods of treatment of disease, as well as diagnostics; (iii) corporate and commercial matters, including its corporate formation, its 501(c)(3) tax-exempt status, ongoing corporate governance, and other tax matters
- Represent a Phoenix-based biotech research institute concerning research collaboration agreements and licensing, joint ventures and certain tax matters (including unrelated business income tax issues)
- Represent a Phoenix-based medical research institute associated with a major hospital concerning (i) material transfer agreements, grant and subgrant agreements, and research collaboration agreements; (ii) patent prosecution (applications) in the fields of medical devices, diagnostics and biotechnology, including new compounds and methods of treatment of disease; and (iii) other intellectual property-related issues
- Represent a state health/medical agency in connection with (i) assessment of patentability and patent prosecution (applications); and (ii) commercial evaluation of a number of disease control formulations and techniques
- Represent an Arizona-based biotechnology and medical device company in (i) strategically developing, protecting and exploiting their intellectual property portfolio; (ii) patent prosecution, in the fields of medical devices, diagnostics, biotechnology and mechanical engineering; (iii) trademark and copyright applications and registration; (iv) licensing, collaboration and commercialization agreements; and (v) technology transfer, sponsored research and cooperative research and development agreements with the USDA and several universities in the United States and Australia; (vi) financing matters, including securing multiple rounds of venture capital funding
- Represent a Phoenix-based bioinformatics company that is developing a system designed to enable independent health care companies to deliver medical data, via the Internet, including radiology images, on a secure HIPAA compliant basis. Have represented this client concerning (i) patent prosecution (applications); (ii) trademark applications and registrations; (iii) intellectual property licensing matters; and (iv) other intellectual property-related issues
- Represent a Fountain Hills, Arizona-based pharmaceutical company engaged in research and development of compounds which the company expects will enhance the treatment of pancreatic and prostate cancer patients. Have represented this client concerning (i) a research and collaboration agreement with a biotechnology research institute; (ii) a license with an out of state university; and (iii) patent-related issues
- Represent a Tucson-based company that is the world’s leading supplier of automated diagnostic systems to the anatomical pathology market in connection with trademark, copyright and technology matters, including litigating on behalf of the company in protecting its trademarks
- Represent a leader in the emerging field of bio-medicinal drug discovery and development of natural product-like compounds in connection with certain of its intellectual property matters, including domestic and international trademark applications and registrations, as well as domestic and international enforcement of its trademark rights
- Represent a Phoenix-based nanotechnology company concerning (i) technology agreements and trade secret counseling; and (ii) trademark and copyright applications, registrations and counseling
- Represent an emerging medical services and medical software company in connection with its intellectual property matters including counseling on trademark, copyright and patent matters, corporate formation, private placement, and financing matters
- Represent an early-stage investment banking firm based in Phoenix which is dedicated principally to serving biotechnology, life sciences and medical devices companies with investment banking and venture capital services.
- Represent the Foundation of one of the Arizona universities concerning various commercial and tax matters, including the formation of its technology transfer entity and unrelated business income tax issues, and counsel the technology transfer entity concerning qualified deferred executive compensation.
