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Cannabis IP Portfolios: Diligence Before you Buy


All sorts of opportunities abound in the cannabis sector! Investments, mergers and acquisitions, and brand and technology licensing agreements are just a few. What does it take to button up these transactions? Due diligence. Cross those i's and dot those t's, or better yet, dig into the IP components that must be evaluated before any such transaction closes with peace of mind. This session will provide you with practice and practical advice on how to conduct due diligence on an IP portfolio in various types of transactions. The panel will identify top diligence issues so you can spot them in the next transaction you handle, and we'll discuss how to address them. And just for fun (because what is diligence if it isn't fun? The doc review for transactional attorneys... amirite?), for the final portion of the session, the panel will conduct a mock diligence meeting where many of these issues will be discussed in real time!

Marcelo Pomeranz, Cooley

Dr. Marcelo Pomeranz’s practice focuses on the development and execution of world-wide intellectual property strategies for biotech and pharmaceutical companies. He has extensive experience in securing, defending, and challenging patents to provide clients with the necessary protection and freedom to operate to monetize their inventions. He has extensive technical experience in plant biology, RNA silencing, CRISPR gene editing, strain engineering, plant-derived medicines, molecular biology and systems biology. Marcelo is also an expert in cannabinoid biology and chemistry, representing clients in all areas of cannabinoid research, including cannabis and hemp breeding and genetics, cannabinoid and terpene biosynthesis, synthetic cannabinoid chemistry, cannabinoid and terpene extraction and detection, and cannabinoid formulation and pharmacology. He successfully secured the first patents to THC-containing plants in the US, Canada, and Europe. He holds a PhD in Molecular Biology and Biotechnology. Marcelo's doctoral research focused on elucidating mechanisms for AU-rich mediated RNA degradation and the formation of RNA processing bodies and stress granules in plants. After his graduate work, he undertook a postdoctoral fellowship at The Ohio State University Center for Applied Sciences and the Arabidopsis Biological Resource Center. His postdoctoral work focused on the discovery of gene regulatory networks and developmental expression programs using next-generation sequencing and mathematical modeling. Marcelo was awarded the American Bar Association's Award for Excellence in intellectual property law. He has authored and co-authored numerous publications appearing in Biochimica et Biophysica Acta, The Plant Journal, Plant Physiology and Plant Signal Behavior.

Mary Shapiro, JD, MBA, Managing Director, Evoke Law, PC

Mary Shapiro
Evoke Law, PC
mary@evoke.law

Mary Shapiro, Managing Director of Evoke Law, PC, based in San Francisco, California, is an intellectual property attorney specializing in trademark, consumer protection, copyright, and internet law.

For 20 years prior to her legal career, Mary served in a variety of marketing positions in the book industry, including roles in retail, distribution and publishing. Mary started her legal career in 1999 at Townsend and Townsend and Crew LLP. There, Mary supported businesses in a variety of industries: technology, medical device, pharmaceutical, wineries, non-profit foundations, and consumer products.
Her cannabis practice began in earnest in 2009, offering specialized legal services in intellectual property and consumer protection. Mary strives to assist cannabis operators in selecting strong and enforceable brand names, with her day-to-day work encompassing clearing, filing, prosecuting, enforcing, and licensing trademarks in the U.S. and internationally.

In 2016, Mary rebranded the firm to Evoke Law, continuing to specialize in serving the cannabis industry. By registering brands and enforcing intellectual property rights, businesses are positioned to expand their brands nationally and globally. In the consumer protection arena, Evoke Law guides cannabis operators through the complex compliance issues associated with packaging and labeling, recalls, and advertising. The firm encourages clients to carefully view each decision from the vantage point of its overall marketing strategies and business objectives, as well as the company’s risk tolerance level.

Mary has been a leader in bridging intellectual property law, state cannabis regulations, and the cannabis marketplace. In 2015, Mary was a founding Board member of the National Cannabis Bar Association (NCBA), which now has over 700 active members. She currently serves as the Board Secretary, co-chairs the organization’s worldwide expansion (as the International Cannabis Bar Association (INCBA), and is in a leadership role in the Continuing Legal Education program. In 2016-2017, Mary collaborated with industry advocacy groups and fellow legal colleagues, to persuade the California Secretary of State to allow registration of trademarks for cannabis products and services. In early 2018, with the assistance of a technical advisor and expert witness testimony, Evoke Law provided the USPTO with irrefutable scientific evidence that the mature stalks do indeed produce CBD in appreciable quantities without the commingling from other plant parts, including any ‘resinous’ secretions, which debunked the USPTO’s incorrect internal position on this matter, and resulted in the federal registration of a client’s trademark for a hemp-derived product.

Evoke Law provides pro bono assistance to Marijuana Policy Project, Americans for Safe Access, California Cannabis Industry Association, International Cannabis Bar Association, and Cannabis Marketing Association. Mary is also a First 50 supporter of Women Grow, and regularly speaks at industry conferences including MJBiz, NCIA, CCIA, INCBA, Women Grow, and Emerald Cup.

 

Jason Moscovici, Partner, Lawyer, Biochemist, Robic, LLP

Jason Moscovici is a partner, lawyer and biochemist with ROBIC, LLP, a multidisciplinary intellectual property law firm from Quebec, Canada. His IP practice specializes in regulated industries such as food, alcohol, cannabis, pharmaceuticals, medical devices, cosmetics, natural health products, advertising and consumer products.

 

Jason’s focus on the valorization and enforcement of intellectual property, as well as the numerous compliance issues that orbit regulated industries, have allowed him to quickly become one of the most trusted legal advisors to the emerging cannabis industry. His perspectives on compliance, intellectual property and the commercial hurdles related specifically to cannabis are routinely solicited by stakeholders in this space.

 

Jason leads ROBIC`s cannabis group and sits on the life sciences committee of the firm.

Jonathan Cousin, Associate, Cooley

Jon advises pharmaceutical companies and specializes in integrating regulatory and patent exclusivity strategies in order to maximize the value of his clients’ products. He has worked on several Orange Booklisted products. He works closely with his clients to develop and implement patent strategies, with a particular focus on late-stage clinical trial inventions that provide significant additional patent protection. He also has experience conducting patentability, invalidity, freedom-to-operate/non-infringement analyses, IPOs, and due diligence for acquisitions and sales. Jon has counseled clients in a variety of technologies including pharmaceutical formulations and methods of treatment based on clinical trials, new chemical entities, biotechnologies, companion diagnostics, purification processes, polymers, and food additives. He represents clients of all sizes, including startups, specialty pharma, and publicly traded companies. Jon knew he wanted to work with cutting edge pharmaceutical products, so he pursued in PhD in organic chemistry after earning his JD. Jon's doctoral research focused on the synthesis of multivalent ligands to study biological recognition processes in cancer. While pursuing his PhD, Jon was also in-house patent counsel at Montana State University’s Technology Transfer Office. 


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