I was recently interviewed by Clara Cottrell of TheScitechLawyer regarding the challenges of building a law firm and my advice for lawyers who are trying to build firms or even just simply build careers in these difficult economic times.

To read the article in full, please click here:

http://prinzlawoffice.com/wp-content/uploads/2010/01/scitechprofilekristieprinz1.pdf.

I recently sat down with IP Society’s Patrick Reilly to discuss intellectual property licensing and what start-ups seeking legal counsel need to know about intellectual property licensing.  The focus of the interview was on technology licensing, particularly in the software area, rather than biotechnology licensing, but I wanted to bring it to the attention of blog readers, since the interview may be of interest to many of you.

Click here to view the video.

Technology Transfer Tactics recently interviewed me on the issue of whether poster presentations jeopardize a tech transfer office’s commercialization efforts.

I wanted to share the interview because the article raised some interesting questions.  Of course, universities have long been dealing with the challenges of having to reconcile the competing interests of the educational/research institution’s desire to publish and provide educational opportunities to students vs. the intellectual property protection/commercialization goals of a tech transfer office.  However, this article addressed a unique aspect of that conflict, which I think will be of interest to blog readers.

The Seventh Circuit decided last week in favor of the Wisconsin Alumni Research Foundation (“WARF”) in its licensing dispute with Xenon Pharmaceuticals.

As I stated in my Silicon Valley IP Licensing Blog posting on this case, I strongly agree with the outcome in this case and I view this decision as an affirmation of a licensor’s rights in an exclusive license of joint intellectual property.  Had the case been decided differently, I certainly would have had some practical concerns as an IP licensing attorney as to how exclusive licenses to joint intellectual property in collaborations should be drafted.

For another take on this case, you might want to check out PatentlyO, which did not really take a position on the outcome, but provided a little different commentary on the court’s decision.

While this case may not have any groundbreaking precedential value as an intellectual property decision, I think it provides some good practical lessons for anyone drafting or negotiating license and collaboration agreements in the biotech world, whether representing a corporation or working for a tech transfer office at a university, as well as for those who are actually executing the agreements once they are signed.  Clearly, some mistakes were made here that resulted in expensive litigation and will likely result in a costly damage award against Xenon as the loser.

Despite ongoing negotiations in the Senate and House throughout 2009, the new year is beginning with the SBIR reauthorization effort at a continued standstill.

While Congress did successfully save the SBIR/STTR from extinction by implementing a series of five continuing resolutions (“CR”) since the authorization expired back in September 2008, no permanent solution has been reached and the current CR is set to expire on January 31, 2010.  Thus, the SBIR/STTR programs continue to be in limbo.

If you have been following this issue at all and are familiar with the SBIR/STTR programs, you may be wondering why these programs continue to be in a perpetual state of almost extinction.

According to the SBIR Gateway, which has been covering this issue, the problem is that the Senate and the House cannot agree on the terms of a reauthorization bill.  There are apparently eight issues that are still being debated:

1. Length of reauthorization;
2. Venture capital participation in SBIR;
3. Award levels;
4. Sequential Phase II award;
5. Retention of Phase I requirement;
6. Allocation increase;
7. Administrative funds; and
8. Rural and state outreach.

SBIR Gateway attributes the problems to the fact that ” the more the Senate was willing to compromise, the more the House wanted” and asserts that the “House Small Business Committee under the leadership of Nydia Velazquez and her staffer Michael Day wanted to hold the SBIR program hostage.”  According to SBIR Gateway, a key issue is that Velazquez is receiving large campaign contributions from the National Venture Capital Association (“NVCA”) and biotech investors, and they are the groups who would stand to benefit from the House Bill the most.   So, the argument is that Velazquez is unwilling to agree to more than a two year reauthorization for this very reason.

Regardless of what is going on here, it is clear that the whole SBIR reauthorization effort has become bogged down in politics and has been therefore left on the backburner.  Based on what I personally have observed this past year, I would argue that this seems to be the current state of affairs for anything involving small business: Congress seems to have put small businesses in general on the backburner for whatever reason, despite the fact that small businesses, which include biotech companies and other start-ups, provide the majority of jobs in this country and unemployment as well as underemployment continues to be the overarching concern of most Americans today. So, small businesses have largely been left to fend for themselves through this recession and deal with the fact that access to capital has all but dried up, while Congress has been out bailing out banks, failed auto companies, and other “too big to fail” institutions–which employ only a small percentage of the nation’s workforce–with our taxpayer dollars.

Does any of this really make sense?

The California Biotech Law Blog would like to see Congress to reassess its priorities in 2010:  it is time to put the focus on small business.   I am certain that many of you in the biotech community would agree that getting serious about finally passing a  SBIR/STTR reauthorization bill would be a good start.

Title: What Small Businesses Need to Know to Protect their Companies\’ Intellectual Property Assets
Location: Webinar
Link out: Click here
Description: Are you a small business owner who believes that your business has no intellectual property to protect? While it is true that there may be some small businesses which do not have intellectual property, the reality is that most small businesses do in fact have intellectual property, which is not being properly protected. This program is designed to educate small businesses on what they need to know to identify and protect the intellectual property assets in their companies.

The speaker for this event is Kristie Prinz, the Managing Principal of the intellectual property and e-commerce boutique law firm, The Prinz Law Office, located in Silicon Valley, CA. Ms. Prinz is a frequent speaker and media contributor on intellectual property-related issues. Her media interviews and appearances include Dow Jones, CNN Radio, American Public Radio’s “Marketplace,” IP360, California Lawyer, Genetic Engineering & Biotechnology News, and Sky Radio. She also authors the California Biotech Law Blog and the Silicon Valley IP Licensing Law Blog, and has been a regular contributor to the “Ask the Lawyer” column on intellectual property law for Lawyers.com.
Start Time: 10:00
Date: 2009-10-14
End Time: 11:00

Title: What Companies Need to Know About the Legal Risks of Business Blogging
Location: Webinar
Link out: Click here
Description: Companies are increasingly launching blogs to advertise and promote their businesses. While the benefits of adopting a business blog can be extensive, companies may also face legal consequences if they start posting to a blog without first having a good understanding of the legal issues they may encounter through their activities. This program is designed to educate companies on what they need to know about the legal risks of business blogging.

The speaker for this event is Kristie Prinz, the Managing Principal of the intellectual property and e-commerce boutique firm, The Prinz Law Office, located in Los Gatos, CA. Ms. Prinz is a frequent speaker on blog law issues and recently completed work on a monograph titled “Managing the Risks of Employee Blogging,” which is scheduled to be published by the Science and Technology Law Section of the American Bar Association. Ms. Prinz is an avid blogger herself, currently running two legal blogs, the California Biotech Law Blog and the Silicon Valley IP Licensing Law Blog.
Start Time: 10:00
Date: 2009-09-09
End Time: 11:00

Title: Secrets to Launching an Effective Blog to Promote Your Business
Location: Webinar
Link out: Click here
Description: Have you heard stories about how other businesses have launched blogs to promote their businesses? Are you interested in launching a blog to promote your business as well? This program will share some of the secrets to launching an effective business blog, addressing such issues as:

* Choosing the best name and subject for a business blog;
* Selecting the best domain name for a business blog;
* Targeting the right audience;
* Choosing the right platform and host;
* Developing the right blog design and layout for a business blog; and
* Advertising and promoting a business blog.

The speaker for this program is Kristie Prinz, who is the Managing Principal of Prinz Law Management Consulting. Ms. Prinz is an avid blogger who recently launched the new Start-up Law Firm Blog and has two other legal blogs, the California Biotech Law Blog and the Silicon Valley IP Licensing Law Blog. Ms. Prinz is a frequent speaker on blog-related issues, and recently completed a monograph titled “Managing the Risks of Employee Blogging,” which is scheduled to be published by the Science and Technology Law Section of the American Bar Association. Her consulting practice advises small law firms on a variety of business issues such as building a web presence, blogging issues, small firm advertising and promotion, law firm technology, financing the law firm, and business development.
Start Time: 10:00
Date: 2009-08-26
End Time: 11:00

Following up on our recent coverage of the patent reform debate, Genetic Engineering & Biotechnology News recently interviewed me for their article Patent Reform Battle Pits Biotech against High-Tech. The interview addressed the competing perspectives of the biotech and high tech industries on the issue of patent reform.

Here we go again. . . .Patent reform is back on the table: two bills have been introduced and are again being debated in Congress.

The first of the two bills, the Leahy-Hatch bill, S. 515, was introduced on March 3, 2009.  According to a summary by the Congressional Research Service, the key points of this patent bill, also known as The Patent Reform Act of 2009, are as follows:

Defines “effective filing date of a claimed invention” as the filing date of the patent or the application for patent containing the claim to the invention (thus establishing a first-to-file system).

Declares that, to the extent consistent with U.S. obligations under international agreements, patent examination and search duties are sovereign functions. Requires that those functions be performed within the United States by U.S. citizens who are federal employees.

Revises various other rights and requirements related to patents, including regarding: (1) damages; (2) post-grant procedures; (3) citation of prior art; and (4) inter partes reexaminations; (5) preissuance submissions by third parties; (6) venue and jurisdiction; and (7) the regulatory authority of the Patent and Trademark Office.

Replaces the Board of Patent Appeals and Interferences with the Patent Trial and Appeal Board.

Revises provisions concerning the residency of federal circuit judges and the facilities and administrative support which must be provided to them.