Intellectual Property Business Development

W. JOHN KEYES, PH.D. +1-773-***-****

*****.*****@*****.***

www.linkedin.com/in/w-john-keyes-ip

ADMISSIONS: Massachusetts, Illinois; Registered to practice before the United States Patent and Trademark Office S U M M A R Y

Experienced intellectual property professional with a strong background in patent prosecution, litigation, and licensing. Familiar with all aspects of patent law, including freedom to operate opinions, non-infringement opinions, invalidity opinions, patent application drafting and prosecution, international portfolio management, ANDA litigation, and IPR proceedings. I have also worked with due diligence teams of attorneys evaluating patent portfolios and companies for potential licensing and/or acquisition. Additionally, I draft and review license agreements, assignments, material transfer agreements, asset purchase agreements and other IP related agreements, as well as provide IP support to a broad range of functions including new drug applications, regulatory filings, research, data exclusivity, clinical, manufacturing, alliance management, and business development. Typical technologies in which I work include small molecule pharmaceuticals, biologics, medical devices, medical diagnostics, immunology, virology, immuno- oncology, generative AI in molecular design and development, polymers, material science, semiconductors, and batteries. E D U C A T I O N

UNIVERSITY OF ILLINOIS AT CHICAGO LAW SCHOOL (then The John Marshall Law School), Chicago, IL 2008 J.D. (worked full-time while attending law school) UNIVERSITY OF CHICAGO, Chicago, IL 2002

Ph.D. in Organic Chemistry

Presidential Award Recipient, Microscopy Society of America UNIVERSITY OF ROME “LA SAPIENZA”, Rome, Italy 1994 M.S. in Organic Chemistry (studies from 1989 to 1994 equivalent to earning M.S. in U.S.) E X P E R I E N C E

VIZGEN INC., Cambridge, MA, November 2024 to present Contractor, Legal Counsel

• Representative technologies include equipment, consumables, and software in the context of spatial transcriptomics and proteomics.

• Manage and advise on contentious and non-contentious intellectual property matters, including patents, trade secrets and trademarks; interpret and execute licensing, collaboration, and service agreements.

• Advise on domestic and international intellectual property, commercial, corporate, and regulatory matters, handle tariff, royalty, and Bayh-Dole-related issues.

VIR BIOTECHNOLOGY INC., San Francisco, CA, February 2023 to October 2024 (left due to layoffs affecting 25% of company staff) Senior Counsel, Intellectual Property

• Representative technologies included vaccinal antibodies, antibody-drug conjugates, antibody-RNAi combination therapies, and cytomegalovirus vector vaccines.

• Conducted patentability, freedom-to-operate, and infringement analyses, managed international patent portfolio and formulated and enacted strategies for managing the lifecycle of intellectual property and related expenditures.

• Analyzed and solved contractual issues relating to royalty fees in international licensing agreements. Negotiated and traded intellectual property assets with outside partners, licensors, governmental agencies, and academic research organizations.

• Managed and protected trade secret rights and data privacy in cross functional teams with stakeholders, regulatory affairs, alliance managers and business development units.

• Managed intellectual property and contractual matters for the European research center of the company.

• Set up a novel legal framework for handling generative AI-based processes, work products, and intellectual property.

• Attended matters relating to intellectual property in the context of new drug applications and regulatory affairs with the FDA, EMA, and their counterparts. Researched and advised on regulatory exclusivities for BLAs, ensuring compliance and strategic advantage in patent portfolios.

CONAGEN INCORPORATED, Bedford, MA, November 2020 to December 2022 (left due to round of layoffs) Intellectual Property Attorney

• Representative technologies included biosynthesis and organic chemistry modification of novel molecules and intermediates. Key research efforts were focused on antibodies, vaccines, glycosylated derivatives of biological molecules, and natural products for pharmaceutical and nutraceutical applications.

• Conducted patentability and freedom-to-operate analysis and participated in offensive or defensive patent activities before judiciary or administrative bodies. Created and executed patent strategies and carried out patent prosecution both in house and by directing outside counsel.

• Created and negotiated contractual provisions with other corporations and institutions, such as licenses, non-disclosure

(NDA), material transfer (MTA), joint research agreements (JRA), options, and portfolio sales and acquisitions.

• Provided strategy counseling, updates, and recommendations related to the management of global patent portfolios to ensure alignment with the company's business priorities and advise on future risk and reward scenarios.

• Additional areas of responsibility included agreements with outside consultants and contract research organizations, as well as monitoring third party activities in areas of interest. NUCLERA (then E Ink Corporation), Billerica, MA, October 2019 to October 2020 (hired to add life science expertise for collaboration) Intellectual Property Attorney

• Collaborated closely with researchers on the development of novel biotechnological applications including diagnostic devices and automated gene and peptide synthesis.

• Counseled company executives on joint research agreements, acquisition of intellectual property portfolios.

• Performed landscape and freedom-to-operate analyses.

• Left company due to uncertain outcome of research efforts. LATHROP & GAGE, Boston, MA, March 2019 to October 2019 (interim role while awaiting in-house role) Patent Attorney

• Collaborated closely with researchers to identify new inventions and prosecute patent applications directed to novel biologicals for RNAi therapeutics, modified oligonucleotides, antibody-drug conjugates, diabetes management medications, gene therapies, and viral vectors.

• Performed freedom-to-operate analyses, counseled clients on patent portfolio licensing and acquisitions, and rendered opinions of counsel in pharmaceuticals, life sciences, and organic chemistry. SUNSTEIN KANN MURPHY & TIMBERS, Boston, MA, Sep. 2016 to January 2019 (left due to family member’s illness) Patent Attorney

• Counseled startup clients in the biologics and medical devices arenas on patenting strategy, development, and management, gaining early allowance for mucosal cancer treatments.

• Rendered opinions of counsel and assisted clients in litigation and successful post-grant proceedings in the areas of small- molecule pharmaceuticals, medical devices, pollution remediation, organic synthesis of peptides, and software. CHICAGO LAW FIRMS – MOVED AS A GROUP, 2003 – 2016 (relocated to Boston to immerse in Life Science community / industry)

~BLANCHARD & ASSOCIATES LLC, Mar. 2013 to Aug. 2016 (Moved with Group from Evan Law Group)

~KLINTWORTH & ROZENBLAT LLC, Aug. 2009 to Mar. 2013 (Moved with Group from Evan Law Group)

~EVAN LAW GROUP LLC, Mar. 2007 to Jul. 2009 (Moved with Group from Dentons)

~DENTONS, Apr. 2003 to Feb.2007

Patent Attorney/Agent

• Represented generic pharmaceutical companies in Hatch-Waxman litigation and prepared Paragraph III and Paragraph IV opinions of counsel.

• Worked closely with R&D group developing novel diabetes diagnostic techniques and developed multinational portfolio.

• Successfully defended small-molecule pharmaceutical patents in post-grant proceedings before the PTAB.

• Rendered freedom-to-operate opinions with a focus on neurosciences, biotechnologies, and therapy screenings.

• Prepared and prosecuted patent applications in the fields of biologics, bioassays, biosensors, stem cells, personal healthcare products, natural products, imaging techniques, chemicals, semiconductors, energy storage devices, and agro-chemicals. Bar Admissions: Massachusetts (2018), Illinois (2008), United States Patent and Trademark Office (2003) Memberships: American Intellectual Property Law Association (AIPLA), ABA, ISBA Publications:

• Keyes et al. (2007) Semagenesis and parasitic angiosperm Striga Asiatica, The Plant Journal, Vol. 51, p. 707

• Keyes et al. (2001) Dancing together. Social controls in parasitic development. Plant Physiology, Vol. 127, No. 4, p. 1508

• Keyes et al. (2000) Signaling organogenesis in parasitic angiosperms: xenognosin generation, perception and response. Plant Growth Regulation, Vol. 19, No. 2, p. 217

• Kim et al. (1998) On becoming a parasite: evaluating the role of wall Oxidases in parasitic plant development. Chemistry and Biology, Vol. 5, p. 103

• Capobianchi et al. (1997) Quantitative evaluation of template effect in the formation of cyclobis(paraquat-p-phenylene). Journal of Organic Chemistry, Vol. 62, No 20, p. 7015

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