RELEVANT EXPERIENCE
Prior to joining Practus, Scott worked in the intellectual property practice group at Offit Kurman, P.A., a mid-Atlantic regional law firm, and then with Gordon Feinblatt LLC, a Maryland law firm.
Scott spent ten years as in-house general counsel to midsize companies in the technology and food industries, counseling on a wide array of legal issues in the areas of corporate governance, intellectual property, commercial transactions and dispute resolution, regulatory compliance and international trade. He has supported technology commercialization efforts as counsel and advisor to companies in several industries including information technology, engineering, specialty chemicals and energy, and provides specialized services to companies in FDA regulated markets such as food and beverage, biotechnology, pharmaceuticals and medical devices.
Scott has represented biopharma and medical device companies in negotiating clinical trial agreements, collaboration and licensing agreements, contract manufacturing agreements and other agreements related to bringing their products to market.
In addition to working with clients on business issues, Scott maintains an active docket of patent and trademark applications on behalf of companies developing a diverse array of technologies such as software applications, consumer electronics, biotechnology, pharmaceuticals, medical devices and other advanced technologies, helping clients build value through strengthening their brand and the procurement of intellectual properties. He also serves on client due diligence teams involved in the purchase, sale and licensing of intellectual property assets to maximize returns.
REPRESENTATIVE MATTERS
- Prepared and negotiated an exclusive, worldwide collaboration and license agreement for a public Chinese biologics company to in-license an antibody-API conjugate technology for disease treatment, including multi-tier sublicensing, with regulatory milestone payments in the $2-5M range and commercial milestones in the $5-10M range, royalties ranging from 4-8%. Negotiated all related CDMO and clinical trial agreements.
- Represented a public Chinese biologics company on an evaluation and option agreement for exclusive license to commercialize therapeutics in Southeast Asia and companion clinical supply agreement and license. Molecule-by-molecule milestones included $4M after first patient dosed in Phase II clinical trial, $8M after first patient dosed in registration trial, $10M after approval within the licensed territory. Commercial milestones were $5M on annual sales of $300M and $10M on sales of $600M. Royalties range from 5% – 8% on sales up to $100M to over $600M. Grant-back rights available upon opt-out. Negotiated all related clinical trial agreements.
- Represented a Chinese biologics company negotiating inbound exclusive license (China, HK, and Taiwan) and option (worldwide except Korea and Thailand) agreement with Korean licensor, to develop and commercialize lead oxidase inhibitor compound and derivatives, for treatment, prevention, or diagnosis of human disease. Scope included international patent rights and technology transfer for development and manufacturing, with grant-back rights. Upfront total payments of $10M for license, $20M for option with reimbursements. Milestone payments upon first patient dosed, NDA filing, first commercial sale, with royalty payments of 7% up to $250M and 12% over $1B, with separate sublicensing terms. Negotiated all related clinical trial agreements.
- Negotiated commercial evaluation license and option agreement (CELA) on behalf of local medical technology company with University of Maryland. Directing patent prosecution per terms of CELA in US, Canada, Japan, Mexico, Singapore, Saudi Arabia, UAE, China, EU, and India in connection with minimum viable product development per CELA terms. Option includes exclusive license of patent rights in all fields. Negotiated royalty rates on product sales in the 4-7% range with sublicense range being separately negotiated.
- Represented buyer in $3M acquisition of software company from former business partner.
- Negotiated exclusive master license agreement with grant-back rights with University of Maryland on behalf of inventor and commercial partner to commercialize medical device products for use by dentists. Terms included payment of a basic license fee with running royalties of 6% of net revenues with annual minimums of $10,000 – $50,000 on years 2-4 following first commercial sale with sublicense royalties of 25% on all sublicense income with royalty stacking offsets for third-party system licenses to improve operability of the invention. Negotiated all related clinical trial agreements.
- Acted as seller-side representative overseeing due diligence and legal terms applicable to mergers and acquisitions under Maryland law in the $400M acquisition of TIC Gums, Inc. by Ingredion Incorporated, including the assignment of certain intellectual property rights in exchange for $3M to a spin-out entity now producing and selling commercial products within the agriculture industry.
