Post Job Free
Sign in

Management Information Technology

Location:
Glendora, CA, 91741
Posted:
March 09, 2010

Contact this candidate

Resume:

Joyce L. Morrison

*** **** ****** ***** ****** Tel: 626-***-****

Glendora, CA 91741 email: *************@*******.***

PROFESSIONAL EXPERIENCE

XENCOR, INC., Monrovia, CA 2001 to 2009

Vice President, Intellectual Property

Responsible for all legal matters in the company, including developing and implementing an intellectual property

strategy (including filing, prosecution, licensing, opinions, trademarks and trade secrets), interacting with scientists for

intellectual property and business development matters and coordinating the business, legal and science teams,

drafting and approving all agreements, managing outside counsel and providing legal and business counsel to

management.

Technologies: engineered antibodies and proteins; computational methods; organic (small) molecule work

Professional Achievements:

Developed and implemented intellectual property strategy for start-up biopharmaceutical company, including

preliminary freedom to operate opinions to provide guidance to research and development teams, filing provisional

patent applications on key developments, monitoring competitor patents and applications and providing

validity/infringement counseling.

Member of Executive Management Team.

Responsible for review or generation of all company agreements and transactions.

Implemented standardized models for agreements, including confidentiality, materials transfer, services, consulting,

clinical trial, and academic collaborations.

Developed and implemented policy on agreements, software licenses, confidentiality, publications, laboratory

notebooks, and retention.

Participated in and provided legal counsel to clinical candidate product teams, assisting in the development and

implementation of clinical standard operating procedures, providing legal counseling on intellectual property,

commercial and regulatory issues.

Coordinated the purchase, installation and maintenance of patent and agreement databases.

Achieved significant cost savings by bringing application work in house, active portfolio management and automation.

HERCULES INCORPORATED, Wilmington, DE 1998 to 2001

BETZDEARBORN INC., Trevose, PA (Acquired by Hercules Incorporated in October 1998)

Chief Counsel, Intellectual Property

Intellectual Property Responsibilities: Manage and direct worldwide intellectual property matters, including policy

development, strategic portfolio development and management, transactions and litigation management. Directly

responsible for managing eight attorneys, and paraprofessional and administrative support staff.

General Corporate Responsibilities: Member of Law Department Administrative Team, Dispute Resolution Team and

Intellectual Property Steering Committee (team leader). Responsible for negotiation of commercial transactions for Global

Procurement and for legal issues involving information technology.

Technologies: industrial enzymes, resins, polymers for personal care and industrial applications, water treatment,

paper treatment and technologies.

Professional Accomplishments:

Implemented standard due diligence and post-closing procedures for acquisitions, divestitures and major in-licensing

projects. Managed and negotiated intellectual property issues for major acquisitions, divestitures and licenses.

Acted as lead attorney for nitrocellulose business divestiture and co-lead attorney for pulp and paper business

acquisition.

Managed post-closing intellectual property matters for Hercules’ acquisition of the BetzDearborn business.

Drafted and negotiated in and out license agreements, joint development agreements and sponsored research

agreements. Developed standard and model form confidentiality, consultant, information technology, and joint

research agreements.

Established software licensing guidelines, form services agreements and standard legal term checklists.

Streamlined the docketing process and implemented portfolio management, which resulted in multi-million dollar cost

savings.

Managed legal aspects of global procurement, including negotiation of a $30 Million global telecommunications

agreement.

Implemented and managed corporate cross-functional teams that managed, analyzed and evaluated developing

technologies of strategic importance to the company, as well as managed potential and actual disputes.

Selected for executive leadership training.

BASF CORPORATION, Mount Olive, NJ 1990 to 1998

Managing Counsel, Intellectual Property 1993 - 1998

Designated Deputy to the Vice President, Intellectual Property. Continued responsibility for day-to-day administration of

the Intellectual Property Department and the intellectual property functions of two divisions as noted below. Responsible

for trademark and copyright matters for BASF Group in North America, and coordination of world-wide intellectual property

protection for BASF Corporation and Knoll Pharmaceutical Company. Acted as liaison with Canadian subsidiary and

supervised all intellectual property activities of the subsidiary. Assumed responsibility for corporate function intellectual

property issues and assisted in corporate policy development. Responsible for direct management of five attorneys, three

paraprofessionals and administrative support staff. Responsible for managing outside counsel.

Senior Patent Counsel 1990 - 1993

Responsible for the day-to-day administration of the Intellectual Property Department. In addition, responsible for the

entire range of the intellectual property needs of the Chemicals Division and the Consumer Products and Life Sciences

Division. Businesses include pharmaceuticals (Knoll), nutritional products, dispersions, chemicals, specialty products,

agricultural products and information systems. Responsibilities include counseling, licensing, litigation, opinions and patent

preparation, prosecution and maintenance. Responsible for trademark and copyright matters for the corporation and for

direct management of one attorney and administrative support staff. Also responsible for managing outside counsel.

Technologies: pharmaceuticals (including organic molecules, small molecules and biopharmaceuticals), agricultural

(including organic molecules and biotech), nutritional products (vitamins, animal care products, personal care products,

bulk fine chemicals, generic (organic or small molecule) pharmaceuticals), dispersions, polymers, coatings, automotive

fluids, specialty chemicals, chemicals and intermediates (organic molecules).

Professional Achievements:

Implemented standard due diligence and post-closing procedures for acquisitions, divestitures and major in-licensing

projects. Managed and negotiated intellectual property issues for major acquisitions, divestitures and licenses.

Drafted and negotiated confidentiality, license and research and development agreements to protect client interests.

Developed standard and model form confidentiality, consultant, information technology, and research and

development agreements and form paragraphs for various commercial agreements as well as form books for

licensing and joint development agreements. Established software licensing guidelines and standard legal term

checklists.

Developed department procedures for patent and trademark clearances, docketing, filing, prosecution and

maintenance.

Developed corporate copyright policy, software compliance policy and procedures, and conducted several audits to

ascertain compliance levels. Developed and implemented corporate-wide policies and procedures for the protection

and security of proprietary information. Assisted in the development of internet and intranet policy and procedures and

acted as legal counsel to internet task force.

Supervised various intellectual property litigation matters, including one matter that resulted in $85 million present

value cost benefit to the business.

Developed the standard Intellectual Property Department presentations on Patent Law, Trademark Law, Trade Secret

Law, Proper Laboratory Notebook Procedures, Intellectual Property Litigation for the Layperson, Copyright Law,

Software Compliance, and Patent and Trademark Office Procedures for the Inventor and developed US and Canadian

patent, trademark and copyright law primers for client use.

Coordinated the purchase, installation and maintenance of the first corporate-wide patent and trademark databases.

Assisted in developing and implementing a litigation database, an agreement database and an opinion database.

WESTINGHOUSE ELECTRIC CORPORATION, Pittsburgh, PA

ECKERT SEAMANS CHERIN & MELLOTT, Pittsburgh, PA

UNITED STATES PATENT & TRADEMARK OFFICE, Washington, DC

EDUCATION

J.D., The Dickinson School Of Law of the Pennsylvania State University, Carlisle, PA (top 25%)

B.S., cum laude, Chemistry, Grove City College - Grove City, PA

PROFESSIONAL ACTIVITIES

Member, California Bar

Member, Pennsylvania Bar

Member, U.S. Patent and Trademark Office

Association of Corporate Patent Counsel American Bar Association

American Intellectual Property Law Association California Bar Association

Association of Corporate Counsel Pennsylvania Bar Association

BIO Los Angeles Intellectual Property Inn of Court

Co-Chair, American Conference Institute, Freedom-to-Operate Opinions for the Biotechnology,

Pharmaceutical and Chemical Industries

Co-Chair, American Conference Institute, Biotechnology, Pharmaceutical and Chemical Patent Prosecution Strategies

Speaker, American Conference Institute, FDA Boot Camp

Speaker, American Conference Institute Biotechnology Patent Law

Speaker, California State Bar, Intellectual Property Section programs

Panelist, BIO, IP Committee, Intellectual Property and Follow-on Biologics Legislation and proposed regulations



Contact this candidate