IP Due Diligence & Freedom-to-Operate in Practice

Sean Jauss

Sean Jauss is a solicitor and Head of the Legal Team at Mewburn Ellis LLP. Once upon a time he was a scientist. He gained his BSc in microbiology from Imperial College, London and a PhD in the same subject from the University of Cambridge (Trinity Hall) where he focussed on the biochemistry of Pseudomonas sp. bacteria. On completing his PhD, however, he decided to apply his science to the legal profession and eventually trained as a solicitor at Slaughter and May. When he qualified Sean left the City to establish the technology transfer office at the London School of Hygiene & Tropical Medicine. Some years later the love of surfing sent him West and he joined the Bristol office of Osborne Clarke where he headed the transactional intellectual property team.

Sean advises his clients on technology transfer and the exploitation of intellectual property. This includes advising on strategy, conducting due diligence and preparing and negotiating transactional agreements (often in the context of corporate transactions). He also advises on life science/pharma regulatory issues.

Sean has particular experience in the life science, clean technology and defence/engineering sectors. In Chambers & Partners (2012) he was noted as “an expert on the non-contentious side, with a strong background in biotechnology that makes him extremely popular with clients”.

Tim May

Timothy May is a partner in the Washington, DC office of Finnegan LLP. He has over 20 years experience in the field of US patent law, and focuses his practice on advising European high-tech companies on US patent matters. He counsels clients in all areas of US patent practice and currently manages the patent portfolios for several European clients in various electrical and mechanical technologies. He also counsels clients on patent validity and infringement. Prior to joining the firm, he served as a Patent Examiner at the US Patent and Trademark Office, where he examined applications involving digital communications, image analysis and testing and measurement devices.

Christian Reinders

Christian Reinders is Chief IP Counsel at Draexlmaier Group. He is responsible for all IP matters such as patent prosecution work, advising the board of management and all business units about IP matters, negotiating and reviewing all agreements in relation to IP matters, organising internal IP trainings, defining and developing internal workflows in relation to IP matters and defining and implementing patent strategies. Christian has worked as a German and European patent attorney over the last 15 years in different roles for various companies and IP firms in Germany, Switzerland and the UK, and therefore knows about working as an outside IP counsel and as an in-house IP counsel. He has extensive experience of advising internal and external clients on patent portfolio management, patent strategy, and how to implement IP-related workflows within an organisation.

Tim Whitfield

Tim Whitfield is a partner with Powell Gilbert LLP. He advises clients in contentious IP matters across all IP rights with a strong focus on patent litigation and strategy, across a wide range of technologies, especially disputes having an international element in the pharmaceutical sector. He represents clients in cases before the English Courts and the European Patent Office. He has very extensive experience of advising clients on the co-ordination of international patent litigation strategy including in the pharmaceutical, medical devices and electronics fields. Tim also advises on related issues arising from international technology standards, patent pools and licensing, as well as pharmaceutical regulatory issues and SPCs. Tim also has experience of patent portfolio due diligence projects, contentious design right issues and trade mark infringement disputes.

Sean Jauss

Dr Sean Jauss is a partner and Head of the Legal Team at Mewburn Ellis LLP. He advises his clients on technology transfer and the exploitation of intellectual property. This includes advising on strategy, conducting due diligence and preparing and negotiating transactional agreements (often in the context of corporate transactions). He also advises on life science/pharma regulatory issues. With a PhD in Microbiology and his experience establishing the technology transfer office at the London School of Tropical Medicine, Sean has a particular focus in the life science, clean technology and defence/engineering sectors.

John Nevard

John Nevard was, until recently, Director, Intellectual Property, for Cambridge Display Technology Ltd (CDT). He now runs his own IP consultancy, holds a non-executive directorship of TLIP Ltd, and is a senior advisor to Tianhao Intellectual Property in Hangzhou. After years of experience as an engineer, John changed career in ICI and qualified as a European Patent Attorney where he advised many businesses within the chemicals, polymers and materials groups of ICI. He became Global Intellectual Property Manager for ICI’s polyurethanes business in Everberg, Belgium, later part of the Huntsman group of companies, during which time he was a frequent visitor to Shanghai for technology transfer negotiations. He then entered into private practice in Hong Kong before moving back to England in 2003 to take on the role as Senior Patent Counsel, and then Chief IP Counsel, for the Alere group of companies. In April 2011, John took up his position with CDT. He has lectured at the Shanghai University of Finance & Economics and also on different aspects of Chinese IP law at the Centre for Commercial Law Studies of Queen Mary, University of London.