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General Counsel Legal Affairs

Location:
Rancho Santa Margarita, CA
Posted:
December 12, 2023

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Resume:

Thomas E. Jurgensen...

Trabuco Canyon, CA • 858-***-**** • ad1wr2@r.postjobfree.com • www.linkedin.com/in/thomas-jurgensen-esq-61267b240/ Business-savvy, operationally focused general counsel who builds and strengthens legal capability to protect corporate/IP interests in startup/early-stage/mid-size, multinational biopharma and life sciences companies. A strategic business partner, problem solver, and entrepreneur, having built and reenergized legal departments while leveraging global IP portfolios to deliver maximum value to owners. Blends high-yield legal strategies, systems thinking, and scientific foundation with creativity, collaboration, and natural leadership to deliver results in key performance areas.

§ Innovative IP Legal Strategies – Developed unique patent claim strategies and obtained coverage driving successful negotiations with big pharma. Created enhanced value and patent thicket deterring potential competitors and facilitating strategic initiatives in key company technology.

§ Patent/IP Portfolio Development – Built patent portfolio from four to 40+ families positioning company for big pharma corporate partnerships and successful litigation. Rightsized bloated patent portfolio while maintaining value-reducing prosecution costs 40%+.

§ Legal Capability Building – Built legal function from scratch in several companies, including revitalizing departments. At Salk, rebuilt legal/tech transfer function, resulting in institute being named Biocom Partner of the Year. Rebuilt legal function at Organovo by increasing engagement and collaboration.

§ Transformational Impact – Transformed company from passive patent holder to accentuate company’s pioneering patent position. Moved Academic Institute from purely academic player to key industry partner, recognized by Biocom.

§ Litigation Management – Managed litigation against major pharma company on global basis, resulting in multimillion- dollar payments and royalty/milestone obligations. Cut excessive litigation expenses by more than $750K per month/60%. Convinced competitor to pay multimillion-dollar upfront payment with large ongoing royalties.

§ Team Building – Throughout career hired key team members to rebuild legal departments and strengthen capabilities; structured functions and facilitated interdepartmental collaboration to facilitate team building. A Portfolio of Legal Expertise for Ensuring Successful Business Operations

§ Corporate Law

§ Patent and Intellectual

Property Law

§ Real Estate Law

§ Litigation

§ Corporate Governance

§ Securities Compliance

§ Legal Contracts

§ Negotiation

§ Due Diligence

§ Mergers and Acquisitions

§ Risk Management

§ Commercial Agreements

§ Legal Research

§ Legal Writing

§ Strategic Planning

§ Crisis Management

Developing and Executing High-Yield Legal Strategies that Take Business to New Levels Organovo Holdings, Inc, San Diego, CA 2020 – Present GENERAL COUNSEL CORPORATE SECRETARY

Recruited to lead legal strategy for this NASDAQ-listed biotech firm after company was taken back by founder and was relaunching the business. Collaborate with executive team and board on operational structure, legal strategies, IP portfolio, and other key organizational issues. Lead corporate and intellectual property law initiatives. Manage merger and acquisition process. Champion SEC compliance. Facilitate board and committee sessions for optimal governance. Structure, draft, and negotiate agreements to achieve corporate objectives. Manage outside counsel and provide legal advice to internal stakeholders.

§ Ensured compliance with SEC and NASDAQ public trading requirements and standards.

§ Strengthened litigation position enabling successful defense to competitive suit.

§ Mounted successful counterattack to USPTO action and lawsuit leading to sizeable royalty settlement.

§ Trimmed large patent portfolio by more than 40% while maintaining offensive and defensive value.

§ Reduced outside counsel expenses by 50%.

Optima Law Group, La Jolla, CA and Boulder, CO 2011 – 2020 CHIEF EXECUTIVE OFFICER OF COUNSEL

EXECUTIVE ACUMEN AND BULLETPROOF IP LEGAL

STRATEGIES FOR PROTECTING CORPORATE VALUE

Thomas E. Jurgensen Page 2

Launched firm to provide IP, business/corporate, agreements, and securities legal solutions for startup community. Collaborated with more than 1,000 client companies in key technology markets, especially biotech, pharma, and medical devices. Delivered transactional and intellectual property legal strategies. Led initiatives in corporate and securities law. Strategized patent and IP safeguards for technology innovators. Crafted agreements for emerging tech enterprises. Investigated and evaluated proposals/projects for funding.

§ Built firm's reputation in the industry, earning high ranking as “go-to firm” in top law firm listings.

§ Maintained relationships with key funding sources for the benefit of clients.

§ Mentored team members in relationship building and advising startups. Catalyst Law Group, PC, San Diego, CA 2003 – 2010

FOUNDER MANAGING DIRECTOR

Built and led this boutique firm specializing in life sciences and biopharma clients, including for-profit and not-for-profit entities. Recruited and developed talent. Built operational infrastructure. Defined “go-to-market” strategy and oversaw implementation. Sponsored multiple industry events. Tailored innovative solutions to meet unique demands of each client and industry segment.

§ Grew firm to 14 attorneys and 12 staff serving as many as 100+ clients, generating well into seven figures in revenue.

§ Hosted industry groups, facilitating thought leadership and business development networking.

§ Sponsored industry events and made keynote presentations generating clients for the firm. BKF Jurgensen, La Jolla, CA 2000 – 2003

PRINCIPAL

Launched intellectual property division of firm after successful role at Salk Institute (see below). Delivered IP legal counsel to both burgeoning and seasoned enterprises. Championed intellectual property procurement, strategic licensing, and protection.

§ Generated new incremental revenue and clients to firm as core IP division.

§ Expanded firm's positioning into startup community. Ligand Pharmaceuticals, San Diego, CA 2001 – 2002

ACTING GENERAL COUNSEL

Concurrent with BKF, rejoined this biotech company after earlier role as associate general counsel.

§ Reenergized legal function and handled all corporate, SEC, IP, and other legal matters. The Salk Institute, La Jolla, CA 1998 – 2000

GENERAL COUNSEL VICE PRESIDENT TECHNOLOGY TRANSFER Recruited to lead all intellectual property and technology transfer legal and operational matters for this world-renowned bioscience research organization. Reporting directly to CEO and board of trustees, championed licensing strategies, from patents to equity-driven startup collaborations. Led team of six, including patent counsel and business development associate.

§ Reenergized legal function.

§ Named highly coveted Biocom Partner of the Year award in first year of employment. EARLIER ROLES as General Counsel Vice President Legal Corporate Secretary Intellectual Property Attorney with Molecular Biosystems, Inc, Ligand Pharmaceuticals, and 3M. Education

JD, Order of the Coif, Law Review, University of Oregon MS, Animal Ecology. Iowa State University

BS, Biology; Minor in Chemistry, University of Wisconsin River Falls Recent Past and Current Board Memberships

Chairman and Director, Allylix, Inc (acquired by Evolva Holding SA) Director, Jujo, Inc Director, Veritek, Inc Associations

Admitted to the State Bars of Minnesota, 1990, California, 1994, and Colorado, 2013 Licensed to practice before the USPTO, 1990

Admitted, Federal Southern and Central CA District Courts, District Court, CO California Bar Association, Colorado Bar Association



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