Allen R. Baum

Allen Baum is a patent attorney and the managing partner of the firm's Research Triangle Park, N.C., office. Mr. Baum serves on the board of governors for Certified Licensing Professionals (CLP), and was president of the Licensing Executives Society, USA & Canada, in 2006-2007.

With a litigation background, Mr. Baum focuses his practice on licensing, due diligence review, infringement/validity studies, and patent preparation/prosecution in the areas of chemistry, pharmaceuticals, biochemistry, biotechnology and medical devices. His representative clients are active in small molecule pharmaceuticals, crop protection, biologics, vaccines, medical devices, ocular medications/implants, green technologies, nuclear power, and advanced materials.

Mr. Baum represents both large multinational corporations and venture-backed start-up companies in acquiring and licensing intellectual assets. He has negotiated and drafted numerous license and settlement agreements concerning a wide variety of technologies and has been involved in several license transactions related to FTC-forced divestitures. He is frequently retained to assist in due diligence review of assets that are the subject of a transaction.

Mr. Baum has managed large portfolios of patents and applications for Global Fortune 100 companies. On behalf of pharmaceutical clients, he has counseled clients on strategies concerning product patent expirations and the potential emergence of generic competitors. On behalf of venture-backed companies, Mr. Baum has developed and successfully implemented strategies for IP portfolio development and risk management associated with third-party rights.

Mr. Baum frequently provides written opinions on the scope and validity of U.S. patents and is a frequent speaker in intellectual asset management and due diligence courses. He has been recognized by Best Lawyers in America for intellectual property and biotechnology for four years in a row.

Prior to and during law school, Mr. Baum worked as a pharmaceutical chemist for DuPont Merck Pharmaceuticals and SmithKline Beecham. He has also successfully testified as an expert witness in patent and licensing matters before a jury. Mr. Baum holds a J.D. from Widener University School of Law and a B.S. in chemistry from Muhlenberg College. 

• Best Lawyers in America for Intellectual Property and Biotechnology, 2007-2010
• Leading Intellectual Property Strategist, Intellectual Asset Management magazine's "IAM 250 - A Guide to the World's Leading IP Strategists," 2009

• Represented pharmaceutical company out-licensing technology to multiple pharmaceutical manufacturers.
• Represented ocular therapy company in-licensing drug delivery technology.
• Represented numerous clients in-licensing third party patents for defensive and offensive purposes.
• Represented pharmaceutical company in license agreement associated with potential acquisition of FTC ordered product divestiture.
• Represented pharmaceutical company in settlement strategy concerning paragraph IV litigation on blockbuster pharmaceutical product.

• Conducted due diligence review of numerous pharmaceutical and medical device products for acquisition or in-licensing.
• Represented numerous start-up companies seeking financing from venture capital firms and initial public offerings.
• Conducted numerous due diligence investigations of intellectual property protecting marketed pharmaceutical products (including several blockbuster products) in an effort to predict probability and timing of generic market entry prior to patent expiration.
• Identified and implemented successful strategies to design around issued patents to bring generic pharmaceutical products to market.
• Accurately predicted claim construction and outcome in ongoing patent litigation for client considering acquisition of patent infringement defendant.

• Frequently assist clients in strategies for pursuing commercially significant patent portfolios including drafting and prosecution.
• Drafted and prosecuted portfolio of patents for several companies later licensed or sold to third parties.
• Manage large portfolio of patent applications for Global Fortune 100 companies.
• Frequent instructor for intellectual asset management courses.

• Weck Closure Systems v. Vitalitec (first chair). Obtained favorable settlement for patent infringement plaintiff after Markman hearing.
• Coldwell Banker v. Carolina Trace (first chair). Obtained favorable settlement for trademark infringement defendant before preliminary injunction hearing.
• Mitsubishi v. Infineon (first chair). Obtained temporary restraining order and preliminary injunction for plaintiff in trade secret misappropriation case.
• Upjohn v. Mova Pharmaceuticals (second chair). Jury verdict in favor of client finding patent not infringed, invalid and unenforceable. Non-infringement verdict upheld by the Court of Appeals for the Federal Circuit.
• Mova Pharmaceuticals v. Shalala (second chair). Obtained preliminary injunction for client requiring FDA to withdraw competing product from market.

• "When Does Marketing Hype Cross the Line into Misrepresentation?" Intellectual Property Marketing Advisor, October 2008
• "A Year of Change," Intellectual Property Law and Business

• Mr. Baum is a frequent lecturer for the Licensing Executives Society and BIO.

• American Bar Association
• American Intellectual Property Law Association
• Licensing Executives Society
• Triangle Intellectual Property Law Association

• Triangle Business Journal
• Triangle Business Leader
• Triangle Business Leader
• Intellectual Property Marketing Advisor
• Triangle Business Leader
• Triad Business Leader
• Triangle Business Leader
• Triangle Business Leader