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Meet the creators and interpreters of the emerging legal framework in Life Sciences. Joshi, Mala Blaney McMurtry LLP 2 Queen Street East, Suite 1500 Toronto, Ontario, Canada, M5C 3G5 Map Telephone: +416-593-3936 Fax: +416-593-5437 E-mail:
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| Called to the Bar of Ontario, 2004; LL.B., Dalhousie University, 2003; B.Sc. (Hons.), Queen's University, 2000. Member, IPIC Affiliate, Patent Legislation Committee; Toronto Biotechnology Initiative; Indo-Canada Chamber of Commerce (Young Professionals Division Mala is a member of the firm’s Corporate/Commercial Group, practising in the areas of Intellectual Property and Life Sciences. Her practice is focused on intellectual property law including patented medicines litigation, trade-marks, access to information, product liability, internet name disputes and patent validity and infringement matters. She is a registered trade-mark agent in Canada and is a regular contributor to the Legal Alert - Briefly Speaking and Canadian Bar Association - Intellectual Property Quarterly Case Summaries. Practice Areas Intellectual Property and Trademarks; Life Sciences Rummel, Barbara Lano Lindquist & Vennum PLLP 4200 IDS Center 80 South Eighth Street Minneapolis, Minnesota, USA, 55402 Map Telephone: +1 612 371 3940 Fax: +1 612 371 3207 E-mail:
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| Barbara Lano Rummel is Chair of the Lindquist & Vennum Life Sciences Group. She counsels public and privately-held businesses in organizing new ventures and raising capital through public and private financings, facilitating product development, licensing and distribution arrangements, and negotiating mergers and acquisitions. She has represented several companies through initial public offerings and continues to counsel public companies about their 1934 Act SEC reporting obligations. She has concluded numerous M&A transactions in a variety of structures, including private and public mergers, acquisitions of assets and tender offers. She routinely represents manufacturers in drafting and negotiating license and supply agreements. Her experience covers a variety of industries, with particular emphasis upon the life sciences, including medical device and biotechnology companies. Ms. Rummel is a member of the American, Minnesota and Hennepin County Bar Associations, as well as Minnesota Women Lawyers, and represents Lindquist & Vennum within TAGLaw, an international network of independent law firms. She has been selected as a “Rising Star” and a Super Lawyer by Minnesota Law & Politics for the past several years. Education: Drake University Law School (J.D. with honors, 1990) Winona State University (B.S. cum laude, 1986) Admissions: Minnesota, 1990 Practice Areas • Life Sciences • Corporate • Securities • Mergers & Acquisitions Smith, Simon Blake Lapthorn Tarlo Lyons Seacourt Tower, Oxford England, OX2 0FB Map Telephone: ++44 (0) 1865 253284 Fax: ++44 (0) 1865 203574 E-mail:
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| Specialist Group Member: Life Sciences Position: Partner Main Areas of work: Agency/distribution agreements, Biotechnology/pharmaceuticals, Commercial agreements, Competition law, Copyrights/patents/trademarks, Data protection (DPA), Design/design rights, Franchising, Intellectual property (IP), IT/e-commerce, Joint ventures, Media/communications, Outsourcing, Publishing, Telecoms, Terms and conditions
Profile: Simon is an exceptionally experienced technology lawyer with particular specialities in advising on intellectual property, competition/anti-trust and contract law for clients in the biotechnology, medical device and pharmaceutical industries. A frequent public speaker and writer (including co-authoring two books on running biopharma businesses in the UK), Simon is described in the 2004 edition of the Legal 500 as “simply outstanding”. Simon has a masters degree in intellectual property law, and joined Blake Lapthorn Linnell as a partner in early 2005.
Specific examples of Simon’s work include:-
Advising on licensing structures for bioinformatics products Licensing cell lines and other biotech materials Collaborative joint ventures and other partnering structures with mid and big pharmas Reach through licensing issues Royalty stacking issues Structuring milestones and options Parallel imports of pharmaceutical products Advising on the effects of UK and EU competition law on licences of worldwide or EMEA rights, even where the entities involved are not based in the EU Strategic development and manufacturing alliances in diagnostics Advising on UK restrictions on pharmaceuticals advertising Clinical trials arrangements Industry/academia funded research agreements Data protection + privacy Co-marketing agreementsPatent pooling College / University: Guildford College of Law
Date of Admission as Solicitor: 1994 Kelly, Edward Tilleke & Gibbins International Ltd. Advocates & Solicitors Tilleke & Gibbins Building, 64/1 Soi Tonson, Ploenchit Road Bangkok Thailand, 10330 Map Telephone: ++66 2263 7773 Fax: ++66 2263 7710 E-mail:
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| Position: Partner, Intellectual Property Department, and Chief Client Relationship Officer Academic Qualifications: - July 2004, Certificate, "Leadership Development Program", Center for Creative Leadership, San Diego, CA, U.S.A.
- June 2003, Certificate, "Critical Issues in Business Planning", Sasin Graduate Institute of Business Administration, Chulalongkorn University.
- 2001, Post-graduate work in Biotechnology Law and Internet Law, University of San Diego School of Law, San Diego, CA, U.S.A. Honors: USD Graduate Law Merit Scholarship.
- Summer 2000, International Law Program, Chulalongkorn University/Golden Gate University, Bangkok, Thailand. Completed Comparative (Thai/US) Intellectual Property and International Licensing courses.
- Fall 2000, LL.M. in International Legal Studies, Golden Gate University School of Law, San Francisco, CA, U.S.A. Honors: International Legal Studies Merit Tuition Scholarship. Member: Intellectual Property Law Association. Coursework emphasis on International Intellectual Property Law and Asian Pacific Trade Law.
- May 1991, J.D., Boston University School of Law, Boston, MA, U.S.A. Coursework included heavy emphasis on Litigation and Trial Practice.
- May 1988, B.A. Economics, Duke University, Durham, NC, U.S.A. Honors: Emery Worldwide, Inc. Merit Scholarship. Duke University Varsity Wrestling Team.
Professional Qualifications: Admitted to practice law in: California State Courts (June 2000); New York State Courts (March 1992); U.S. District Court, Eastern and Southern Districts of New York; U.S. District Court, Northern District of California
Description of Major Areas of Legal Work Handled: - Intellectual Property Enforcement: Supervise and instruct staff of attorneys and investigators in litigation and enforcement of rights in copyrighted materials, trademarks, trade secrets and patents. Train police, customs officers and other law enforcement officials in anti-counterfeiting tactics. Coordinate and manage turnkey anti-counterfeiting and anti-piracy campaigns, including investigation and forensic analysis of technical evidence, police raids on manufacturers, exporters and retailers of counterfeit goods, collaboration with Royal Thai Customs in border control, collaboration, training and supervision of Public Prosecutors in criminal prosecution, management of civil lawsuits, appeals, media campaigns, and public education efforts. Crisis response management in defense of cases involving threatened infringement. Lobby for practical legislative reforms of Thailand’s IP laws. Counsel private sector clients and consult with foreign trade delegations and Thai negotiators in respect of IP issues in the US-Thailand and Japan-Thailand Free Trade Agreement negotiations.
- Management of Corporate IP Portfolios: Evaluate and audit IP assets of major corporations in order to provide comprehensive strategies to register, protect, license and commercialize IP assets in Thailand and internationally. Valuation of IP assets for purposes of attracting venture and angel capital. Preparation of business plans for purposes of attracting capital. Negotiation and early dispute resolution of commercial IP licensing disputes.
- Contracts & Licensing: Director of the department with complete responsibility for negotiation and drafting of all agreements involving all intellectual property licensing, domestic and international technology transfers, OEM supply, merger and acquisition agreements, strategic partnerships, confidentiality/nondisclosure, hardware/software licensing and technology escrow accounts for the Wireless Communications Division of a US$2 billion telecommunications technology company (NYSE-HRS).
- Complex Litigation: Litigated sophisticated high exposure civil cases from pleading stage, discovery, motion practice, through trial and appeal in federal and state court (US District Courts, EDNY and SDNY and Supreme Courts of all five NYC boroughs, Nassau, Suffolk, Westchester, Rockland and Orange Counties) as well as ADR. Tried in excess of thirty cases to jury verdict.
Membership in Professional Societies and Other Organizations: - American Bar Association (Intellectual Property Law Section; International Law and Practice Section, International Intellectual Property Rights Committee and Southeast Asia Law Committee)
- California State Bar Association (Member of Intellectual Property, International Law and Litigation Sections)
- New York State Bar Association (Member of Intellectual Property Section)
- New York State Trial Lawyers Association (Past Member)
- International Chamber of Commerce: Counterfeiting Intelligence Bureau (ICC-CIB)
- American Chamber of Commerce IPR Committee in Thailand
- Appointed Chair, American Chamber of Commerce Tax & Legislation Committee, 2006
- Nominee, AMCHAM Thailand Board of Governors 2003
- Fellow, Center for International Legal Studies
- Multilaw Intellectual Property Special Interest Practice Group
- Lex Mundi Intellectual Property Special Interest Practice Group
- Member, International Trademark Association (INTA)'s The Trademark Reporter, IAR Task Force
- Asian Patent Attorneys Association
- AIPPI and The Thai Group of AIPPI
- Practising Law Institute
- Computer Law Association
- Thai-Italian Chamber of Commerce
Honors/Recognition: - Identified as pre-eminent practitioner in the field of trademark law in the Guide to the World’s Leading Trade Mark Law Practitioners, in association with Managing Intellectual Property, 2006 edition.
- Selected for listing in International WHO'S WHO of Professionals, 2005-2006 edition.
- Identified by the AsiaLaw Leading Lawyers Survey as one of Asia's leading business lawyers in the area of Intellectual Property, 2003, 2004, 2005, 2006.
- Selected by the editorial board of Aspatore Books as a leading patent lawyer and an author in the book, International Patent Law, published by Aspatore Books, released in March 2005.
- Listed in Legal500.com as a leading individual in the area of Intellectual Property in Thailand, 2003.
- Listed in The Asia Pacific Legal 500 as a leading individual in the area of Intellectual Property in Thailand, 2003, 2003/2004, 2005.
Publications/Professional Lectures (selected): - "Preserving IP: The Uphill Enforcement Path and FTA Implications", presentation to Indonesian Legal Counsel delegation, Bangkok, July 27, 2006.
- (With Vipa Chuenjaipanich), "Innovation does not grow on trees", Corporate Counsellor, Bangkok Post Business News, July 21, 2006.
- "Effectively Capitalizing on the Organization's IP", presentation at the conference Corporate Legal Counsel Forum organized by Asia Business Forum, Bangkok, July 9, 2006.
- (With Michael Loi), "Strategic Protection of IPRs in the Thai Automotive Sector", BNA International, July 2006.
- (With Sukontip Jitmongkolthong), "Brief on IP Issues Confronting Canon Inc. in Thailand", prepared for Canon Inc. visit, June 30, 2006.
- Speaker at the Thailand Regional Forum - "Preserving Intellectual Property: The Uphill Enforcement Path and Free Trade Implications", organized by Dataconsult, Bangkok, June 27, 2006.
- (With Michael Ramirez), "Briefing for the Pharmaceutical Industry on the Impact of Thailand's (Draft) Product Liability Act", presentation to the Board of Directors of the Pharmaceutical Research and Manufacturers Association (PReMA), Bangkok, June 14, 2006.
- (With Emily Picone), "Draft memorandum has goal of curbing sale of counterfeit goods", World Trademark Law Report, June 12, 2006.
- (With Liza S. Leung), "Branding of Thailand as the Hollywood of Asia", Thai-American Business, a publication of the American Chamber of Commerce in Thailand, May-June 2006.
- (With Edward A. Madden and Suebsiri Taweepon), International Guide to IP Rights Enforcement (Chapter on Thailand), compiled by the ICC Counterfeiting Intelligence Bureau, First Edition 2006.
- (With Edward A. Madden), "The Challenges of IP Enforcement in Thailand", presentation at the Pacific Rim Advisory Council (PRAC) Thailand 2006 Conference, Chiang Mai, May 18, 2006.
- Panelist and presenter of a Thai IP enforcement case study at the PRAC Public Seminar on Intellectual Property and Its Importance in Developing Economies, Pacific Rim Advisory Council (PRAC) Thailand 2006 Conference, Bangkok May 16, 2006.
- (With Nuttaphol Arammuang), "Prior use fires FENWAL cancellation", World Trademark Law Report, May 16, 2006.
- (With Zaid Hamzah, Microsoft Director for Intellectual Property), Speaker and Panelist, Strategic Intellectual Property Asset Management Training Forum, Thai Department of Intellectual Property, May 15, 2006.
- (With Edward Madden), "IP and Thailand's Agricultural Sector: Growing Pains", Asialaw IP Review, April 2006.
- "Getting the Black Market to Knock It Off", presentation at the Annual Meeting of the State Bar Association of California Intellectual Property Committee ("Trademark Office Comes to California"), April 3, 2006, San Francisco, and again on April 5, 2006, Marina Del Rey, California.
- (With Edward A. Madden), "Agricultural Industry Concerns over Intellectual Property Protection", Thai-American Business, March-April 2006.
- (With Alexandra Gattino), "Intellectual Property (IP) - 2005 in Review", Thai-American Business, March-April 2006.
- (With Sukontip Jitmongkolthong), "Brief on IP Issues Confronting Levi Strauss & Co. in Thailand", prepared for Levi Strauss General Counsel visit, March 28, 2006.
- (With Alexandra Gattino), "IP Year in Review", Thailand: IP Developments (Tilleke & Gibbins' client newsletter), March 2006.
- "Planning and Implementing Trademark Protection Strategies", presentation at the seminar Trademark and Copyright Protection in Thailand: Moving Forward or Standing Still? organized by Thailand Legal Seminars, Bangkok, March 16, 2006.
- (With Alexandra Gattino), "Brief on IP Issues Confronting the Agriculture Industry in Thailand", prepared for Syngenta Thailand, March 16, 2006.
- Panelist, "Current Issues in IP Litigation", ASEAN-USPTO Workshop on Intellectual Property Rights Enforcement for Judges, Bangkok, March 7-9, 2006.
- "Pharmaceutical issues concerning the US-Thailand FTA: clarifying fact from fiction", presentation at the American Chamber of Commerce in Thailand meeting, Bangkok, February 27, 2006.
- Rapporteur for Thomson Scientific for the 14th Annual Asia Pharmaceuticals Conference, Singapore, February 15-16, 2006.
- "Managing Risk in Promoting Medicines in the Pharmaceutical Industry", a presentation to MSD (Thailand), Bangkok, February 8, 2006.
- "Enforcement of Yamaha Design Patents in Thailand: Plan of Action for Public Criminal Prosecution of Infringer", presented at Board Meeting of Thai Yamaha Studying Yamaha Countermeasures vs. Infringement of Design Patents, Bangkok, January 26, 2006.
- (With Edward A. Madden), "Thailand's push for stronger IP rights in life sciences", AsiaLaw IP Review, January 2006.
(For a complete list of Mr. Kelly's publications and presentations, please see his profile at www.tillekeandgibbins.com.) Practice Areas Intellectual Property Licensing, Transactions, and Enforcement (Pre-litigation and Litigation) |