Allen R. Baum
Shareholder
Overview

“Experienced and detail-oriented, he provides the most thoughtful analysis. He has tremendous knowledge of the chemical arts and is brilliant at his job.”

According to clients interviewed by Intellectual Asset Management (IAM) magazine, Allen provides “advice that is timely, contextually relevant and extremely useful” and his “ability to take complex scientific and legal issues and distil them into advice and guidance that we can truly act upon” is commendable. His more than 23 years of experience as a patent attorney and prior experience as a pharmaceutical chemist at DuPont Merck Pharmaceuticals and Smithkline Beecham gives him the ability to “very quickly pick up on the technology”.

Clients hire Allen to identify and execute strategies to protect key commercial products and bring lucrative products to market in areas heavily patented by competitors. With an extensive litigation background, Allen is also frequently retained to evaluate the strength of patents under consideration for licensing, acquisition, or investment and has provided opinions on patents protecting products with sales in excess of $1 billion.

Allen was president of the Licensing Executives Society for USA & Canada, in 2006-2007 and the president and chairman of the Board of Governors for Certified Licensing Professionals (CLP). Allen serves as the managing shareholder of the firm's Research Triangle Park, N.C., office and previously served a two-year term on the firm’s board of directors. 

Allen’s work includes post grant litigation before the U.S. Patent and Trademark Office, freedom-to-operate studies, due diligence review, infringement/validity studies, licensing, paragraph IV litigation, reexamination, and patent preparation/prosecution in the areas of chemistry, pharmaceuticals, biochemistry, biotechnology and medical devices. His representative clients are active in small molecule pharmaceuticals, crop protection, biologics, vaccines, medical devices, ocular medications/implants, green technologies, nuclear power and advanced materials.

Education
  • J.D.,
    Widener University School of Law, 1992
  • B.S., Chemistry
    Muhlenberg College, 1989
Bar Admissions
  • North Carolina
  • North Carolina Supreme Court
  • U.S. Court of Appeals, 4th Circuit
  • U.S. Court of Appeals, Fed. Cir.
  • U.S. Dist. Court, E.D. North Carolina
  • U.S. Dist. Court, E.D. Virginia
  • U.S. Dist. Court, E.D. Wisconsin
  • U.S. Dist. Court, M.D. North Carolina
  • Virginia
  • Virginia Supreme Court
Technical Background
  • Biopharma
Experience | Non-Legal

Dupont Merck Pharmaceuticals
Analytical Chemist   

Smithkline Beecham
Analytical Chemist

Experience | Teaching
Licensing Executives Society
Fundamentals and Intermediate Intellectual Asset Management Series
Forward Thinking
in the media
November 15, 2016
On November 15, 2016, Attorney at Law magazine mentioned the recent ranking of the Research Triangle Park office Biotechnology Law and Patent Law by U.S. News and World Report and Best Lawyers in its seventh annual edition of "Best Law ...
alert
November 09, 2016

On October 28, 2016, the United States Patent and Trademark Office (“PTO”) again proposed revisions to the...

alert
August 20, 2015
On August 19, 2015, the U.S. Patent and Trademark Office (PTO) announced a second round of proposed changes to the rules for America Invents Act (AIA) proceedings based on comments and feedback the PTO has received in the past year. As PTO Director ...
alert
May 22, 2015
On appeal from the District of Maryland, the Federal Circuit held in Classen Immunotherapies, Inc. v. Elan Pharmaceuticals, Inc., that the § 271(e)(1) safe harbor applied to Elan’s post-approval development of clinical data on its ...
multimedia
August 28, 2012

Allen R. Baum and Ryan L. Marshall discussed strategies for taking advantage of the new proceedings and ...

publication
November/December 2010
Allen R. Baum penned the article “Surviving Investor Patent Due Diligence,” for the November/December 2010 issue of Business Leader. Click here to read more.
publication
Presentations
  • "Learning the Sweet Science: Win the New Boxing Match Known as Inter Partes Review," ACI's Comprehensive Guide to Patent Reform, New York City, January 24, 2013
  • "Assessing the Impact of New PTO Procedures Under the AIA on Hatch-Waxman Strategies Relative to Patent Life Cycle Management," ACI's Maximizing Pharmaceutical Patent Life Cycles, New York City, October 9, 2012
  • "Taking Action to Address Potential Roadblocks with Effective FTO Analysis" ACI’s 6th National Tactical and Practical Guide to Freedom to Operate, Philadelphia, Penn, July 31, 2012
  • "Business Implications of Patent Reform: Taking the America Invents Act Into Account in Doing Deals," Licensing Executives Society's Research Triangle Park Chapter Meeting, Durham, NC, February 14, 2012
  • "Patent 101: Overview of the Fundamental Provisions in the America Invents Act" and "The Timeline of Enactment: Identifying What Needs to be Done Now and Planning for Future Changes," ACI 's Comprehensive Guide to Patent Reform for Life Science Companies, New York City, January 30-31, 2012
  • "Exclusivities and Forfeitures: New Developments, Controversies and Concerns," ACI's 12th Annual Maximizing Pharmaceutical Patent Life Cycles, New York City, October 5, 2011
  • "IP Law Essentials & Best Practices for Venture Capitalists: Everything You Need to Know About Protecting Intellectual Property in 60 Minutes," ExecSense Webinar, April 2011
  • "Preparing for the Exit: Drafting Critical Termination Provisions," ACI's 14th Advanced Forum on Structuring, Negotiating and Managing Life Sciences Collaborative Agreements and Acquisitions, New York, NY, Feb. 17, 2011
  • "The Role of the Regulatory Professional in the Due Diligence Process," 2010 RAPS Annual Conference & Exhibition, San Jose, CA, Oct 25, 2010
  • "Who is on the Hook? Indemnities in Patent Sale and Licenses," Intellectual Property Owners Association Webinar, Sept. 23, 2010 
Representative Matters
  • Represented pharmaceutical company out-licensing technology to multiple pharmaceutical manufacturers.
  • Represented ocular therapy company in-licensing drug delivery technology.
  • Represented numerous clients in-licensing third party patents for defensive and offensive purposes.
  • Represented pharmaceutical company in license agreement associated with potential acquisition of FTC ordered product divestiture.
  • Represented pharmaceutical company in settlement strategy concerning paragraph IV litigation on blockbuster pharmaceutical product.
  • Represented numerous companies in-licensing technology from Universities.
  • Opined on the implications of various licensing terms in dispute.
  • Frequently assist clients in developing strategic approach to license negotiations.
  • Assisted client in out-licensing patent to third party for assertion in litigation.
  • Represented numerous companies in successfully addressing intellectual property risks without litigation. 

Due Diligence

  • Conducted due diligence review of numerous pharmaceutical and medical device products for acquisition or in-licensing.
  • Represented numerous start-up companies seeking financing from venture capital firms and initial public offerings.
  • Conducted numerous due diligence investigations of intellectual property protecting marketed pharmaceutical products (including several blockbuster products) in an effort to predict probability and timing of generic market entry prior to patent expiration.
  • Identified and implemented successful strategies to design around issued patents to bring generic pharmaceutical products to market.
  • Accurately predicted claim construction and outcome in ongoing patent litigation for client considering acquisition of patent infringement defendant.
  • Represented medical device company on intellectual property due diligence issues through acquisition by Fortune 50 pharmaceutical company.
  • Opined on the validity of numerous pharmaceutical, chemical and medical device patents.
Patent Prosecution/Portfolio Management
  • Frequently assist clients in strategies for pursuing commercially significant patent portfolios including drafting and prosecution.
  • Drafted and prosecuted portfolio of patents for several companies later licensed or sold to third parties.
  • Manage large portfolio of patent applications for Global Fortune 100 companies.
  • Frequent instructor for intellectual asset management courses.
Press Releases & Events
August 15, 2017

CHICAGO—Fifteen attorneys at Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, have been selected by their peers for inclusion in The Best Lawyers in America 2018...

July 13, 2017

CHICAGO—Intellectual property law firm Brinks Gilson & Lione is a “top U.S. boutique” and a “Chicago IP stalwart” with “deep reservoirs of prosecution and litigation experience,” according to Intellectual Asset Management (IAM) ...

June 01, 2016

RESEARCH TRIANGLE PARK—National law firm Brinks Gilson & Lione is “at the top of the list” again this year for intellectual property according to IAM Patent 1000 2016—The World’s Leading Patent Professionals, Intellectual Asset Management (IAM) magazine's guide to leading private practice patent professionals and firms.

June 01, 2016

CHICAGO—National law firm Brinks Gilson & Lione is “at the top of the list” again this year for intellectual property according to IAM Patent 1000 2016—The World’s Leading Patent Professionals, Intellectual Asset Management (IAM) magazine's guide to leading private practice patent professionals and firms.

May 19, 2016
CHICAGO—For the third year in a row, Managing Intellectual Property magazine (MIP) has designated intellectual property law firm Brinks Gilson & Lione’s Illinois office as Highly Recommended in its annual rankings, and has ranked the ...
December 10, 2015

ANN ARBOR, MI—Chicago-based Brinks Gilson & Lione, one of the largest intellectual property law firms ...

August 17, 2015
CHICAGO—Thirteen attorneys at Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, were recently listed in The Best Lawyers in America 2016.  Eleven of the honored attorneys are based in ...
June 01, 2015
CHICAGO—Nine attorneys at intellectual property law firm Brinks Gilson & Lione have been named IP Stars for 2015 by Managing Intellectual Property magazine. For the second year in a row, the publication also designated Brinks' offices ...
August 19, 2014
CHICAGO—Sixteen shareholders at Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, have been selected by their peers for inclusion in The Best Lawyers in America© 2015. Thirteen of the ...
July 01, 2014
CHICAGO—James R. Sobieraj, Allen R. Baum and Michael N. Spink, shareholders at Brinks Gilson & Lione, have been named to IAM Strategy 300—The World’s Leading IP Strategists, the sixth annual guide to globally renowned creators ...
June 16, 2014
CHICAGO— Each year, Intellectual Asset Management magazine's IAM Patent 1000—The World’s Leading Patent Practitioners spotlights best-in-class patent prosecution, licensing and litigation practitioners and firms, and this year ...
June 03, 2014
CHICAGO—Fourteen attorneys at intellectual property law firm Brinks Gilson & Lione have been selected by Managing Intellectual Property magazine to appear in its second edition of IP Stars for 2014. Brinks attorneys named include firm ...
January 14, 2014
CHICAGO -- Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, has announced the 2014 chairpersons of its legal and industry practice groups and geographic task forces. The firm added a new practice group ...
June 16, 2014
RESEARCH TRIANGLE PARK, N.C.—Intellectual property law firm Brinks Gilson & Lione's Research Triangle Park office has again this year received high recognition in IAM Patent 1000—The World’s Leading Patent Practitioners, ...
July 15, 2013
CHICAGO—When you're in the business of protecting others' brands, patents and intellectual property, it helps to have a winning brand of your own. That's the situation of Chicago-based Brinks Gilson & Lione, one of the ...
April 24, 2013
CHICAGO – Eleven attorneys at intellectual property law firm Brinks Gilson & Lione have been recognized as IP Stars for 2013 by Managing Intellectual Property magazine, for their insights into the intricacies of practicing IP law and their ...
January 24, 2013
Ryan L. Marshall, Eric J. Sosenko and Allen R. Baum will be featured presenters at ACI's Comprehensive Guide to Patent Reform on January 23-24, 2013 in New York City. Mr. Marshall will co-present the pre-conference workshop 'Patent Reform ...
December 11, 2012
CHICAGO – Brinks shareholders Gary M. Ropski and Allen R. Baum have been recognized as Lawyers of the Year in the 2013 The Best Lawyers in America. Mr. Baum has been named Raleigh Lawyer of the Year in Biotechnology, and Mr. Ropski was named ...
October 9-11, 2012
Allen R. Baum and William R. Boudreaux will be featured presenters during ACI's Maximizing Pharmaceutical Patent Life Cycles conference in New York City. Mr. Baum will be a panelist for the preconference session, "Assessing the Impact of ...
July 31, 2012
On July 31, Allen R. Baum will be co-presenting the session, "Taking Action to Address Potential Roadblocks with Effective FTO Analysis" at ACI’s 6th National Tactical and Practical Guide to Freedom to Operate conference in ...
July 16, 2012
CHICAGO - Brinks attorneys James R. Sobieraj and Allen R. Baum have again been listed by Intellectual Asset Management magazine in IAM Strategy 300 – The World’s Leading IP Strategists (4th. ed.), a reference guide for senior in-house ...
July 09, 2012
CHICAGO– Brinks shareholders Allen R. Baum, William H. Frankel, Gary M. Ropski, James R. Sobieraj and Andrew D. Stover have been ranked among the top U.S patent law practitioners in Intellectual Asset Management’s inaugural IAM Patent ...
Honors
  • IP Star, Managing Intellectual Property magazine, 2013-2017
  • Biotechnology Law "Lawyer of the Year" - Raleigh, The Best Lawyers in America, 2018
  • Best Lawyers in America for Patent, Biotechnology and Corporate Law, 2005-2018
  • Recommended Lawyer, Legal 500, 2017
  • Leading Intellectual Property Strategist, Intellectual Asset Management magazine's "IAM 250 - A Guide to the World's Leading IP Strategists," 2009-2011
  • Leading Licensing Lawyer, Intellectual Asset Management magazine's "IAM 250 – The World’s Leading Patent & Technology Licensing Lawyers,” 2010-2012
  • Leading Intellectual Property Strategist, Intellectual Asset Management magazine's "IAM 300 - A Guide to the World's Leading IP Strategists," 2014
  • Leading Patent Practitioner, Intellectual Asset Management magazine's, "IAM Patent 1000: The World’s Leading Patent Practitioners," 2012-2017
Affiliations
  • American Bar Association
  • American Intellectual Property Law Association
  • Licensing Executives Society
  • Triangle Intellectual Property Law Association
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