Presentation title Date

[Making]
Winning Combinations
Effective Collaboration Between IP
Counsel and BD Professionals
Len Smith
BioNetwork West 2009
 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 2

A Different Kind of Talk…

 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 3

Are We Aligned?

• Number of deals vs.

long term results

• Natural counteraction
• Long term connection to co.
• Relationships
 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 4

Disposition of a Winning Team

• Looking for Win/Win?

• Most effective long term
• Most deals are not static matters
(collaborations, co-pros)
• Organizations that deal once, usually deal again
• It’s a small world (and word gets around)

• Win/Win Team?
• Blood hungry litigators, pushovers
• Creativity a plus (expand the pie)
 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 5

Subject Matter Competencies

• Basic Team
• IP counsel, general legal counsel, BD, management (?)
• Alliance management, an operations champion (scientific
input)
• Extended Team
• Internal
• Tax, Insurance, Clinical/R&D, Marketing
• External
• Local/specialist counsel (China)
 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 6

Worth the Money and Hassle

 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 7

Understanding IP Counsel (Part 1)

• Just Because She’s Paranoid
Doesn’t Mean Someone is Not
Out to Get Her…

• Contracts are made for

divorces, not marriages
• and break-up is likely

• What you say can (and will) be

used against you

• Long term stakes are high

• People will remember your

failures (more than your wins)
 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 8

What are We Here For?

• Typical Deal Drivers

• Exclusivity
• IP, Regulatory
• Technology

• Aims
• Getting it
• Getting around it

• Know What the Deal is About

• BD – its usually about IP
• IPC – IP isn’t everything
 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 9

Conduct DD Early and Often

• Public discussion &

investigation

• Upfront DD

• Post CDA, Pre-Agreement

(TS) DD

• Avoiding contamination
• Secure internal assets
 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 10

IP Counsel Winning Strategies

• Be prompt

• Keep it simple, clear

• Use “no” sparingly

• Provide options
 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 11

Winning Strategies - Negotiation

• Plan your work, work your plan

• Term sheets
• How binding?
• How specific?

• Unique strengths of IPC

in negotiation
 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 12

Understanding BD
• Negotiation is a skill…
• Most lawyers
do not really “get it”

• IP Counsel should
learn to think in terms of
• Expanding the pie
• Anchoring
• Use of higher
authority appeals
• Reciprocity
• Nibbling

• IPC is innately good at

• Fall back/contingency
planning
 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 13

Play Nice Together

• Present a unified front, always

• Make each other look good

• IP counsel will be on front line of alliance management
• BD is the face of the company

• BD’s goals matter to BD (and Management)

• … and should matter to IPC

• Allow people to grow and change

• Allow for break-outs and other communication tools

 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 14

Drafting
• Expectations
• Your IP person probably has a “day job”
• Let IP know what kind of BD person you are…

• Process
• Who’s going to control the draft?
• Always try to, if possible
• BD are not attorneys, but can give good input
• More eyes OK as long as process clear

• Who’s responsible for policing the agreement?

• Balance
• The words really do matter, but so does the deal!
 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 15

Develop Strategies for Common Risks

• Patent term restoration
• Control, compensation

• Pending Claims

• Notice periods
• Too long for IP litigation
• Injunction, Hatch-Waxman, etc.

• Standing for suit

• Field licensing, limits on licenses

• Bankruptcy
• Preservation … not really exclusive
 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 16

After the Deal…

• Post mortem analysis?

• How does the organization learn?

• How is success measured (and when)?

• Exclusion of bad deals by DD
• Educate management to consider more than cost, time
 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 17

Common Sense
 Winning Combinations – Smith – BioNetwork West 2009 October 6, 2009 Slide no 18

Questions/Comments?

Thanks and Bon Appétit!

Len Smith
LSmt@NovoNordisk.com