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Allen R. Baum

Practice Summary

With nearly 20 years of experience as a patent attorney, Intellectual Asset Management (IAM) magazine named Allen Baum one of the World’s Leading Patent & Technology Licensing Lawyers in 2010. According to clients interviewed by IAM, 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 experience as a pharmaceutical chemist at DuPont Merck Pharmaceuticals and Smithkline Beecham gives him the ability to “very quickly pick up on the technology of a specific deal”. 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 is chair of the Chemical Practice Group at Brinks Hofer Gilson & Lione. He also serves on the firm’s board of directors and as the managing shareholder of the firm's Research Triangle Park, N.C., office. Allen is the president and chairman of the Board of Governors for Certified Licensing Professionals (CLP), and was president of the Licensing Executives Society, USA & Canada, in 2006-2007.

Allen’s work includes 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. Allen has also represented animal health clients in evaluating third party rights and licensing in the area of small molecule pharmaceuticals and vaccines for both large and small animals.

Allen represents both Global Fortune 100 companies and venture backed start-up companies. He has been recognized by Best Lawyers in America for intellectual property and biotechnology for five years in a row.

Allen has also successfully testified as an expert witness in patent and licensing matters before a jury. Allen holds a J.D. from Widener University School of Law and a B.S. in chemistry from Muhlenberg College.

Honors/Distinctions
  • Best Lawyers in America for Intellectual Property and Biotechnology, 2005-2012
  • 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
Representative Matters
Licensing
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  • 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
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  • 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.
Litigation
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  • Weck Closure Systems v. Vitalitec (first chair). Obtained favorable settlement for patent infringement plaintiff after Markman hearing.
  • Coldwell Banker v. Carolina Trace (first chair). Obtained favorable settlement for trademark infringement defendant before preliminary injunction hearing.
  • Mitsubishi v. Infineon (first chair). Obtained temporary restraining order and preliminary injunction for plaintiff in trade secret misappropriation case.
  • Upjohn v. Mova Pharmaceuticals (second chair). Jury verdict in favor of client finding patent not infringed, invalid and unenforceable. Non-infringement verdict upheld by the Court of Appeals for the Federal Circuit.
  • Mova Pharmaceuticals v. Shalala (second chair). Obtained preliminary injunction for client requiring FDA to withdraw competing product from market.
  • Edward Lowe v. Marcal Paper. Represented patent infringement defendant in favorable settlement after summary judgment decision on obviousness.
  • SCA v. Procter & Gamble. Favorable settlement for patent infringement plaintiff before trial.
  • Sandvik v. General Electric. Favorable settlement for patent infringement defendant before trial.
Publications
  • “Surviving Investor Patent Due Diligence,” Business Leader, November/December 2010
  • "Key Aspects of Pharmaceutical Due Diligence Intellectual Property Assessment, Parts I and II,"  Regulatory Focus, October and November 2010, Vol. 15, Nos. 10 and 11.
  • "When Does Marketing Hype Cross the Line into Misrepresentation?" Intellectual Property Marketing Advisor, October 2008
  • "A Year of Change," Intellectual Property Law and Business
Presentations
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  • "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, 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 
  • Mr. Baum is a frequent lecturer for the Licensing Executives Society and BIO.
Memberships & Affiliations
  • American Bar Association
  • American Intellectual Property Law Association
  • Licensing Executives Society
  • Triangle Intellectual Property Law Association
Non-Legal Experience
  • Dupont Merck Pharmaceuticals
    Analytical Chemist   
  • Smithkline Beecham
    Analytical Chemist
Teaching Experience
  • Licensing Executives Society
    Fundamentals and Intermediate Intellectual Asset Management Series