Wolf, Greenfield & Sacks, P.C. | 600 Atlantic Avenue | Boston, Massachusetts 02210 | 617.646.8000 | 617.646.8646 fax | wolfgreenfield.com

Communicating Intellectual Property

How to Share the Crown Jewels While Preserving Rights

June 11, 2009

2© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Panelists

Pam Ariniello, Associate General Counsel, Intellectual Property, Dana-Farber Cancer Institute

Kerry Flynn, Vice President, Intellectual Property, Shire Pharmaceuticals

Mary Porter, Chief Intellectual Property Counsel, Cabot Corporation

3© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Panelists (cont)

Pat Granahan, Shareholder, Biotechnology Group, Wolf Greenfield

Ed Walsh, Shareholder, Electrical & Computer Technologies Group, Wolf Greenfield

Facilitated byFacilitated by

Allen Rugg, Shareholder, Litigation Group, Wolf GreenfieldAllen Rugg, Shareholder, Litigation Group, Wolf Greenfield

4© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Tension Between Policy and Reality

Confidentiality of all non-public IP and related communications

Real world realities require disclosure: Employees, suppliers, advisers, etc. Research related communication and collaborations Commercial deals: financings, purchases and sales

5© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Goals

Avoid inadvertent disclosure Affirmative decisions to disclose Appropriate protections

6© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Real World Needs to Disclose

Creation of IP assets Conversation: basic research tool; electronic Cooperation Collaboration

Commercial realities Financing due diligence Mergers and acquisitions

IP valuation: strengths and flaws Litigation evaluation and risks

Disputes

7© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Tools

Patenting Trade secrets Policy and culture of protection Employment contracts and policies Agreements: non-disclosure, joint development,

etc. Attorney-client privilege

8© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Attorney-Client Privilege: Requirements

Communication Between client and counsel Intended to be and, in fact, confidential Purpose of obtaining or providing legal

advice

9© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Waiver of Privilege

Upon disclosure to 3rd party Extends to subject matter Common interest exception:

No waiver if parties share “substantial identity of legal (not commercial) interest”

Factors: Delay disclosure as long as possible Document common legal interest Preserve confidentiality: limit copies, number of

recipients, and require return

10© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Key Topics for Discussion

Policy and culture of confidentiality Inadvertent disclosure: what are risks? Inadvertent receipt of ideas from 3rd party Employees University research institution Non-disclosure agreements M&A and financial diligence Public company specific issues

11© 2009 Wolf, Greenfield & Sacks, P.C. All rights reserved.

Contact

Wolf Greenfield is a full-service intellectual property law firm that builds and enforces strong IP portfolios,

assists businesses to manage IP risks, provides IP licensing and deal-making services,

and defends them from suit.

For questions and requests, please contact Jay Wager, Associate Director, Business Development, at 617.646.8368 or jwager@wolfgreenfield.com.

www.wolfgreenfield.com

Wolf, Greenfield & Sacks, P.C. | 600 Atlantic Avenue | Boston, Massachusetts 02210 | 617.646.8000 | 617.646.8646 fax | wolfgreenfield.com

Communicating Intellectual Property

How to Share the Crown Jewels While Preserving Rights

June 11, 2009