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About
MIHR
PIPRA
Fiocruz, Brazil
bioDevelopments- Institute
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GOLDMAN, Michael L
Michael L. Goldman practices law at Nixon Peabody LLP. He has extensive experience in patent licensing and intellectual property agreements, particularly with sponsored research agreements and license agreements. He deals regularly with pharmaceutical, genomics, and biotechnology companies, as well as universities, agricultural cooperatives, and international entities. His work has focused on serving large and small companies, universities, and other institutions in the biotechnology and chemical fields. He served as a law clerk for Hon. Jack R. Miller, Circuit Judge, U.S. Court of Appeals for the Federal Circuit in Washington, D.C., and served as a patent examiner for the U.S. Patent and Trademark Office. He is a chemical engineer and was previously employed by the Gulf Oil Corporation and the Bendix Corporation. Mr. Goldman has authored articles and given presentations on various licensing projects around the world. He is admitted to practice in the District of Columbia Court of Appeals, the New York Court of Appeals, and the U.S. Court of Appeals for the Federal Circuit. Mr. Goldman is a registered attorney in the U.S. Patent and Trademark Office and a member of the American Intellectual Property Law Association, the American Bar Association, the District of Columbia Bar Association, the New York State Bar Association, and the Federal Circuit Bar Association.
 Abstract
How to Select and Work with Patent Counsel
Abstract:
Public sector technology transfer offices (TTOs) are in the business of “moving” technology from research and development to eventual commercialization in order to advance their missions of serving the greater public good. Intellectual property (IP) management is integral to this process, and integral to IP management is patenting. Maximal captured value for public sector technologies will be greatly affected by the quality and scope of the patent coverage and this, in turn, is greatly influenced by the quality of work done by patent counsel. It is therefore essential for a TTO to select a patent attorney whose work will enhance the institution’s prospects for obtaining optimal licensing arrangements. From selection to hiring to ongoing interactions, it is important for the TTO and the patent counsel to develop and maintain a good working relationship. Central to this relationship is ensuring that patent counsel can prepare and prosecute patent applications in a manner that achieves positive results cost effectively. This is a complex process, and there are many responsibilities that both counsel and the TTO must assume. In addition, patent attorneys can provide general counseling: resolving inventorship issues, providing licensing and agreement support, and settling disputes. The TTO will be the patent attorney’s actual client and function as the interface between counsel and the institution. By selecting qualified patent counsel and then developing a good relationship, a TTO can ease its workload and facilitate its mission. Therefore, retaining a skilled patent attorney and one that is well suited to the particular needs of the TTO is an essential element for operating a viable technology transfer program. The search for such an attorney must be approached thoughtfully.
Abstract
The IP Management of the PRSV-Resistant Papayas Developed by Cornell University and the University of Hawaii and Commercialized in Hawaii
Abstract:
In the late 1990s, a consortium of public sector organizations commercialized the first and still-major food biotechnology product developed by public sector organizations. The author represented the Papaya Administrative Committee, an organization of papaya growers in Hawaii, in obtaining patent licenses necessary for the commercial introduction of a disease-resistant transgenic papaya. This chapter describes the approach taken in deciding what patents needed to be licensed, how the licenses were obtained, and how they were administered.
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