Firm Practice Areas
Business Development Transactions
Ms. Fenton provides legal support to business development (BD) professionals engaged in a range of intellectual property (IP) driven transactions, including asset acquisitions, technology transfers, material transfer agreements, technology evaluation and option agreements, sponsored research agreements, consulting agreements, clinical trial agreements, funding agreements, licenses (in-bound, out-bound and cross-licensing arrangements), collaboration and joint development agreements, clinical trial agreements, and asset sales/dispositions. Ms. Fenton has structured agreements covering patent rights, trademarks, trade secrets, know-how, unique biological materials, and data. She has negotiated agreements for a wide range of life science technologies: from vaccines, antibody-based therapeutics, biologics, and point of care medical devices, to novel drug development platforms and manufacturing technologies. She is also familiar with agreements at the innovator-vendor interface such as R&D services agreements and supply agreements.
Government Contracting, Collaborations and IP Licensing
Ms. Fenton supports life science businesses in all aspects and stages of U.S. government contracting, including contracts based on the Federal Acquisition Regulation (FAR) and Other Transactional Authority (OTA), from proposal through performance to contract closeout. Similarly, Ms. Fenton provides legal support to businesses engaging in other types of agreements with U.S. government entities, including Cooperative Research and Development Agreements (CRADAs), clinical trial agreements, and nonexclusive and exclusive licenses of government owned IP rights. Her experience spans across the entire collaborative life cycle from initial application for license rights to negotiation, compliance, alliance management, and resolution of royalty disputes. She has supported contracts with a range of agencies and national laboratories including BARDA, NIH, DARPA, CARB-X, NIIMBL and the Lawrence Livermore National Laboratories. She is also familiar with the contracting requirements of major nongovernmental R&D funders such as the Bill & Melinda Gates Foundation, CEPI, and the Wellcome Trust.
Bayh-Dole Act
An understanding of the Bayh-Dole Act and its implications for life science businesses developing products and services arising from patent rights subject to the Act is critical for successfully navigating the risks and opportunities of commercialization. Ms. Fenton has experience in advising clients on how the Act works and how to comply with its requirements. She has successfully applied for and received waivers of the Act’s domestic manufacturing requirement, which impacts innovators’ ability to utilize global resources to support global markets for vaccines and other biologic products.
Intellectual Property (IP) Strategy
As a former VP level Chief IP Counsel, Ms. Fenton provides advice and support to in-house IP counsels responsible for developing and implementing IP strategy. She has published extensively on the three dimensions of IP strategy (asset management, risk mitigation, and value extraction) and can coach in-house counsel in communicating resource needs and identifying value metrics. However, LSTS does not accept engagements for patent preparation and prosecution.