DOUGLAS J. NAAB

** **** *** ******, ***** Chili NY 14514

585-***-**** vonage / 585-***-**** cell

l31dei@r.postjobfree.com

PROFESSIONAL SUMMARY:

Intellectual property professional with broad industry experience centered on the negotiation and close of technology transfer and patent licenses in corporate, academic and start-up settings. Additional experience in patent analysis, prior art review and freedom to operate studies. Strong program management skills with the ability to prioritize and lead complex IP and technology based business transactions from initiation to conclusion. Foundational training in the prosecution, analysis, interpretation and management of patents (Registered US Patent Agent).

PROFESSIONAL EXPERIENCE:

IPEX CONSULTING, Rochester NY

Principal

March 2011 – present

IP licensing, strategy and related services.

Client projects include:

Patent analysis, file-wrapper review, prior art searching, claim charting and license strategy for a financial securities exchange

Invention analysis and license strategy for a research institution

Patent evaluation and assertion strategy for a patent licensing firm

NERAC, INC., Tolland CT

Analyst, IP Solutions & Licensing

June 2009 – February 2011

Work with Nerac clients on license strategy, intellectual property/ technology vetting and market research.

Clients are primarily in the pharmaceutical, biotechnology, medical device, electronics and chemical industries.

Key responsibilities:

IP, analysis, commercialization and strategy

Patent and technology evaluation

Client interface and relationship development

Prior art research and opinion, FTO studies and potential licensee identification and qualification

IPEX CONSULTING, Rochester NY

Principal

December 2008 – May 2009

IP licensing, strategy and related services.

Client projects include:

Evaluation and commercial strategy for license and patent search software based on semantic vector analysis

CELLTRAFFIX INC., Pittsford, NY

Vice President, Business Development & Licensing

May 2007 – December 2008

Direct and manage all aspects of IP strategy, licensing and business development for biomedical start-up.

Technology involves novel devices for stem cell purification and neutralization of metastatic cancer cells.

Key responsibilities:

Manage university and industrial collaborations and in-license agreements

Develop corporate strategy and generate presentation used for capital raise

Interface with patent attorneys and align patent portfolio with technology and product strategy

IPVALUE MANAGEMENT, INC., Bridgewater, NJ

Vice President, Licensing

October 2002 – April 2007

Lead international licensing (US, Asia-Pacific, Europe) programs on behalf of IPVALUE’s corporate partners. Majority of efforts on behalf of Xerox Corporation, British Telecom, French Telecom and Palo Alto Research Center.

Key Responsibilities and Achievements:

Structure, negotiate and close intellectual property based business deals

Coordinate and lead enablement (technology transfer), assignment and patent assertion license deals

Work with partner company to identify out-license/patent sale opportunities and manage the preparation of

the same into viable programs

XEROX CORPORATION, Rochester, NY

Manager, Technology Licensing, Xerox Intellectual Property Operations (XIPO)

December 2001 - October 2002

Technology license function manages out-license transactions for the corporation. Primary responsibility to direct and manage a team of 13 Licensing Executives and Business Development professionals responsible for technology transfer deals.

Key Responsibilities and Achievements:

Manage budget, revenue and P&L reporting

Close patent, know-how and trademark licenses valued at $15+ million, manage 25+ new transactions

Member of Corporate Patent Strategy Committee, Broad Claims Committee, Patent Abandonment Committee

Licensing Executive, Xerox Intellectual Property Operations (XIPO)

October 2000 December 2001

Lead patent/technology licensing programs including contacting potential licensees, negotiation and deal close.

Key Responsibilities and Achievements:

Lead negotiator on 10+ licensing programs

Close 2 licenses valued at over $5M each

INTEGUMENT TECHNOLOGIES, INC., Buffalo, NY

Senior Vice President, Business Development/Intellectual Property

October 1996 – October 2000

Company produces high performance polymers targeted at chemical and military applications. Technology involves the plasma surface treatment of fluoropolymers utilizing a patented process. Initial product, FluoroGrip Contact Films , launched in 1999.

Key Responsibilities and Achievements:

Oversee intellectual property and license strategy

Manage internal teams tasked to submit ATP, SBIR and STTR grants. Awarded two SBIR grants.

Direct daily business operations

TECHNOLOGY TRANSFER SERVICES, University at Buffalo

Licensing Associate

April 1994 - October 1996

Direct life science based licensing efforts for the University. Close several licenses including a DNA vaccine component, liposome delivery system and an artificial blood formulation.

Key Responsibilities and Achievements:

Evaluate biological, pharmaceutical and chemical invention disclosures (~50/year)

Interface with Ph.D. level researchers

LEDERLE-PRAXIS BIOLOGICALS, Rochester, NY

Business Development Intern; June 1993 - - September 1993

Construct methodology to value inventions and components useful for vaccine development. Model integrated into the corporate business development function.

Immunology Laboratory Assistant May 1992 - June 1993

Design and implement immunological research for component vaccine development.

DANA FARBER CANCER INSTITUTE, Boston, MA

Research Associate, Pediatric Oncology/Immunology, July 1989- August 1991

Conduct research into immunosuppressive compounds including FK-506, rapamycin and cyclosporine targeted for use in human bone marrow transplantation. Member of the clinical bone marrow transplant team.

EDUCATION: REGISTERED UNITED STATES PATENT AGENT

Admitted to the US Patent Bar on August 4, 1997

Registration Number 41,215

ROCHESTER INSTITUTE OF TECHNOLOGY, Rochester, NY

MBA Fall 1993: Technology & Marketing Management

STATE UNIVERSITY OF NEW YORK AT POTSDAM, Potsdam, NY

BA in the Biological Sciences 1989/

Biological Honor Society 1986- 1989

ASSOCIATIONS: Licensing Executives Society.

REFERENCES: Available upon request.

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