Ed has more than 30 years’ experience as an intellectual property attorney, both as in-house and outside counsel. He leverages this comprehensive legal perspective on behalf of his clients in the pharmaceutical industry and provides strategic, business-focused counsel in matters including product life-cycle management; IP due diligence for business transactions; patent, trademark, domain name, and copyright protection; global patent prosecution strategies; and freedom-to-operate analyses for pipeline products and in-licensing opportunities.
Before joining Mintz, Ed was global IP counsel at Indivior, formerly Reckitt Benckiser Pharmaceuticals. Prior to this, he was senior director of intellectual property at Amylin Pharmaceuticals, where he led the company’s IP group, and provided strategic legal and business advice to C-level management, business development, R&D, commercial operations, investor relations, and cross-functional teams on all areas of IP, including global IP strategies, collaboration and licensing agreements, and product life-cycle management. He started his legal career as outside counsel and he also has been a partner in the intellectual property practices of two other international law firms.
Experience
- Provided strategic IP advice and support to senior management and outside counsel for the IP due diligence activities in the demerger of Reckitt Benckiser Pharmaceuticals from Reckitt Benckiser Group PLC to form Indivior on December 23, 2014.
- On behalf of Amylin Pharmaceuticals, led the IP due diligence and reviewed and drafted IP licensing provisions for a collaboration agreement with Takeda Pharmaceuticals, which included an up-front payment of $75 million.
- On behalf of Amylin Pharmaceuticals, led the IP due diligence for the termination of a collaboration agreement with Eli Lilly and Company, which included Amylin obtaining 100% global rights to a diabetes franchise, an up-front payment of $250 million to Lilly, and Amylin’s assumption of $1.2 billion debt.
- On behalf of Amylin Pharmaceuticals, led the IP due diligence for the merger and acquisition agreement with Bristol-Myers Squibb for total consideration of $7 billion.
- Provided litigation support in a district court patent litigation involving dural grafts; advised client on patent prosecution of its related design-around patent applications; and supervised European counsel in an opposition to the corresponding European patent.
- Provided litigation support in an ITC investigation involving smallpox vaccines, and managed European counsel in an opposition to the corresponding European patent.
- Managed the patent portfolio of an emerging pharmaceutical company focused on small molecules; drafted freedom-to-operate opinions; provided client counseling; and worked with company management and corporate counsel on an IPO and SEC filings. Conducted patent prosecution and drafted invalidity, noninfringement, and freedom-to-operate opinions in the chemical arts (e.g., polymers, coatings, additives, pharmaceuticals).
Recognition & Awards
The Daily Transcript: Finalist for Power of Attorneys – Honoring Corporate Counsel (2012)
Phi Beta Kappa
