Editor-in-Chief. Contributors
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1 About the Authors Editor-in-Chief Aline C. Flower is Associate General Counsel at the Bill & Melinda Gates Foundation. Aline provides legal support to the foundation s Global Development program which includes Agricultural Development; Water, Sanitation & Hygiene; Family Planning; Maternal, Neonatal and Child Health; and Integrated Delivery, among other programs. Aline works on a wide variety of legal issues related to private foundations, specializing in IP law. She develops IP strategies for programmatic investments and other key relationships with public and private sector partners in order to achieve the foundation s charitable purpose and Global Access. Before joining the Foundation, Aline practiced employment and intellectual property law with Garvey, Schubert & Barer in Seattle and then worked in the field of technology transfer and intellectual property at the University of Washington where she was the Manager of Legal Affairs for Technology Licensing. Aline has drafted and negotiated a wide range of IP and technology research, development, commercialization and related agreements. Aline is Editor-in-Chief and a contributing author of Intellectual Property Technology Transfer. Aline received her B.A. from Smith College (1987), her Master s degree from Yale University (1991) and her J.D. from the University of Michigan Law School (1996). She is a Fulbright scholar and a member of the Phi Beta Kappa Society. Chapter 1 Contributors Steven R. Englund is a partner with Jenner & Block LLP in Washington, D.C. For almost 25 years he has represented government contractors and grantees in intellectual property and technology transfer matters, including structuring and negotiating government agreements and subcontracts to protect intellectual property rights, developing intellectual property policies, obtaining waivers of U.S. manufacturing requirements, and handling disputes with the government. Other xi
2 xii IP Technology Transfer aspects of his practice focus on substantive intellectual property law, and particularly use of entertainment content in the digital environment and the application of copyright law to new technologies. He has helped shape copyright law for the digital environment by representing clients in the industry negotiations leading to the enactment of most recent U.S. copyright legislation and in numerous rulemaking and other proceedings before the U.S. Copyright Office. He also counsels clients in diverse industries concerning copyright law and has represented clients in the entertainment, information technology, communications, financial services, biotechnology and other industries, as well as universities, in a wide variety of commercial and corporate transactions involving new media or technology. Chapter 2 Nelson G. Dong is a Seattle-based partner in the Dorsey & Whitney law firm and heads its National Security Law Group. He regularly advises private and public universities, other research institutions, engineering and other professional societies and corporations around the world on export control and national security matters and on international technology law issues. He has handled many complex licensing and compliance matters with the Departments of Commerce, State, Defense and the Treasury. He is a member of the President s Export Council Subcommittee on Export Administration that advises the Department of Commerce on export control policy issues. He was also a White House Fellow and U.S. Department of Justice official in the Carter Administration with responsibility for international and national security matters, and he later served as a federal prosecutor in Boston. He is a member of the Council on Foreign Relations and an associate member of the National Association of College and University Attorneys (NACUA). He has taught export control and embargo law at multiple NACUA annual conferences and many American Conference Institute and U.S. government programs, and he is a published author in the field. Nelson has served as a trustee of Stanford University, and he is a graduate of Stanford and the Yale Law School. Chapter 3 C. Joël Van Over is a partner at Pillsbury Winthrop Shaw Pittman LLP in its McLean, Virginia office. Ms. Van Over is a litigator with substantial experience in government contract and subcontract related litigation, including protests and claims, and in corporate mergers and acquisitions involving government contractors including those involving classified contracts. She also has assisted clients in internal investigations and disclosures to the government concerning False Claims Act
3 About the Authors xiii and other potential statutory violations. Ms. Van Over has significant experience in intellectual property issues. She has completed her course studies at George Washington University Law School toward an LL.M. in Intellectual Property. Chapter 4 Judy L. Curry is Associate General Counsel for North Carolina State University. Prior to her employment with NC State, Ms. Curry worked for The University of Georgia Research Foundation as the General Counsel and Assistant Vice President for Research from Ms. Curry received her B.A. degree from the University of Tennessee, her J.D. degree from Memphis State University and an LL.M. from the London School of Economics. Ms. Curry s areas of practice focus primarily on intellectual property, technology transfer and sponsored research. Dr. Lawrence M. Sung is a partner at Wiley, Rein & Fielding in Washington, D.C., and a registered patent attorney with a Ph.D. in microbiology. Dr. Sung has over 20 years of experience in biotechnology, medical device, and pharmaceutical (small molecule and biologics) patent counseling, litigation, and technology transfer. Having served on several professional school faculties, he is also a recognized intellectual property law scholar. He represented, as lead counsel, a global medical technology company in an amicus curiae submission before the Supreme Court of the United States in Teva Pharms. USA, Inc. v. Sandoz, Inc. Also as lead counsel, he represented a global medical technology company in an amicus curiae submission before the U.S. Supreme Court in Bilski v. Kappos. He is a professor at John Hopkins University Carey Business School; a lecturer at Catholic University of American Columbus School of Law, and a former Consultant at the National Institutes of Health, National Human Genome Research Institute. He graduated, cum laude, from American University Washington College of Law, and was awarded a Ph.D. from the Uniformed Services University of the Health Sciences. Chapter 5 Aline C. Flower is Associate General Counsel at the Bill & Melinda Gates Foundation. Aline provides legal support to the foundation s Global Development program which includes Agricultural Development; Water, Sanitation & Hygiene; Family Planning; Maternal, Neonatal and Child Health; and Integrated Delivery, among other programs. Aline works on a wide variety of legal issues related to private foundations, specializing in IP law. She develops IP strategies for programmatic investments and other key relationships with public and private sector partners in order to achieve the foundation s charitable purpose and Global Access.
4 xiv IP Technology Transfer Before joining the Foundation, Aline practiced employment and intellectual property law with Garvey, Schubert & Barer in Seattle and then worked in the field of technology transfer and intellectual property at the University of Washington where she was the Manager of Legal Affairs for Technology Licensing. Aline has drafted and negotiated a wide range of IP and technology research, development, commercialization and related agreements. Aline is Editor-in-Chief and a contributing author of Intellectual Property Technology Transfer. Aline received her B.A. from Smith College (1987), her Master s degree from Yale University (1991) and her J.D. from the University of Michigan Law School (1996). She is a Fulbright scholar and a member of the Phi Beta Kappa Society. Chapter 6 Donald A. Gregory is a partner at Dickstein Shapiro LLP and a registered patent attorney. His practice includes intellectual property counseling, licensing and business acquisitions. Mr. Gregory received his B.S. in Nuclear Engineering from the University of Virginia and his J.D. from the College of William and Mary. As patent counsel for Philip Morris Incorporated, Mr. Gregory managed patent, consulting, university-sponsored research, and licensing matters. He was a patent attorney with The Babcock & Wilcox Company and previously served there as an engineer, performing nuclear and thermal hydraulic design of commercial nuclear reactors. Mr. Gregory has spoken and written widely on intellectual property matters and is recognized in Intellectual Asset Management s Patent 1000 rankings of patent and IP licensing attorneys worldwide. Elizabeth Parsons is a member of the Intellectual Property Practice Group in the Washington, D.C. office of Womble Carlyle Sandridge & Rice, LLP. She focuses her practice on intellectual property transactions, including mergers and acquisitions, licensing and commercialization agreements and joint development agreements. She also counsels companies in transactional due diligence and patent prosecution. Elizabeth has a particular focus on the life sciences, including the biotech and pharmaceutical industries, and also has significant IP experience in telecommunications, software, financial, e-commerce, renewable energy (including wind and solar), manufacturing and education. Cybil G. Roehrenbeck is a senior attorney at American Medical Association. She was counsel in the Washington, D.C. office of Congressman Walter Jones, U.S. House of Representatives, and served as liaison to the House Financial Services Committee. She was an Associate at J.C.
5 About the Authors xv Watts Companies LLC. She has a B.A. in English and Foreign Affairs from the University of Virginia and a J.D. from the University of Georgia. She is a member of the Virginia bar. The views expressed herein are the author s own and are not those of the American Medical Association. Chapter 7 Wesley D. Blakeslee, principal of Blakeslee, LLC, is a consultant and lawyer providing legal and consulting services to universities and business in the area of licensing and commercialization of intellectual property, university-industry relationships, university policy, legal and management issues, and recruiting of technology transfer and general counsel personnel. The former Executive Director of Tech nology Transfer at The Johns Hopkins University, Blakeslee led an office of more than 50 professionals who commercialize the discoveries and inventions of university faculty members. In seven years as head of The JHU Technology Transfer Office, he moved the office from $7.7 million in revenue and 47 license and option agreements to more than $18 million in revenue and more than 140 license and option agreements. In 2006, Blakeslee received the inaugural First Decade award from the National Association of College and University Attorneys, presented to a member with 10 or fewer years of service who has made a significantly innovative contribution to the association, and in 2013 was name Alumnus of the Year by the Penn State Department of Engineering Science, the School of Engineering s highest award. Blakeslee serves as Of Counsel to Blakeslee & Wallace, PC, the firm he founded more than 30 years ago. He is a Martindale-Hubbell AV Preeminent rated attorney, and an LES Certified Licensing Professional. Leigh A. Penfield is a Senior Licensing Associate at Johns Hopkins Technology Transfer at the Johns Hopkins University. She has drafted, negotiated and executed a variety of life science intellectual property agreements associated with academic technology transfer and is a LES Certified Licensing Professional. Ms. Penfield currently manages and monitors technology transfer agreements. She has taught several courses on technology transfer and biotechnology for Advanced Academic Programs at the Zanvyl Krieger School of Arts & Sciences at the Johns Hopkins University. Previously, Ms. Penfield was employed with the University of Maryland Biotechnology Institute in technology transfer and in private practice specializing in chemical patent prosecution. She is a graduate of Montclair State College with a B.S. in Biology magna cum laude and the Johns Hopkins University with a M.S. in Biotechnology. Ms. Penfield earned her J.D. and Masters of Intellectual Property from the University of New Hampshire School of Law (formerly Franklin Pierce Law Center).
6 xvi IP Technology Transfer Michael B. Goldstein is a partner in the Cooley Business department and co-chair of the firm s Higher Education practice group. He was the founder and co-chair of the Higher Education industry practice at Dow Lohnes, which merged with Cooley in He is resident in the Washington, D.C. office. Mr. Goldstein leads a group of lawyers and professionals with long experience and deep expertise in serving clients in the postsecondary sector, including public, independent and for-profit institutions, national, state and regional organizations, institutional and professional accrediting commissions, courseware developers, service providers, lenders and many of the private equity groups active in the field. Mr. Goldstein has been a pioneer in the development and rational regulation of higher education in general and online learning in particular, and in the creation of innovative approaches to combining the resources and interests of the non-profit, public and for-profit postsecondary communities. He has served on numerous panels and committees on a variety of higher education issues, including as an expert member of the UNESCO- CHEA Task Force on Degree Mills and as a member of the National Advisory Panel for the enactment of the State Authorization Reciprocity Act. He has long served as General Counsel to the American Association of Community Colleges as well as in the past as general counsel to other higher education organizations, including the State Higher Education Executive Officers and the Middle States Commission on Higher Education. He is the author of the chapter on Legal Issues in the Encyclopedia of Distance Learning as well as many papers and chapters in professional journals and publications and is a frequent speaker at higher education conferences. Mr. Goldstein has been named in Best Lawyers in America for Education Law and recognized in Washington, D.C. Super Lawyers for Schools and Education. He also served as Assistant City Administrator and Director of University Relations in the Office of the Mayor of the City of New York, and then served Associate Vice Chancellor for Urban and Governmental Affairs and Associate Professor of Urban Sciences at the University of Illinois at Chicago. J.D. Moss is an attorney in Cooley LLP s Technology Transactions Group. He focuses on technology and intellectual property transactions for companies across all industries. His practice includes structuring, drafting, and negotiating a wide variety of commercial agreements, including patent licenses, strategic alliances and partnerships, digital media transactions, and technology software and hardware development, procurement, resale, and distribution arrangements. Mr. Moss holds a J.D. from the University of Virginia School of Law and received a B.A., with distinction, from the University of Virginia.
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