Leading Innovation Counsel (IP and Business)

Summary

Gillian Fenton
I drive superior results through negotiation and alliance management of IP-based Life Science Transactions
I am a proven leader of intellectual property (IP) and business development (BD) legal functions in global biopharmaceutical businesses. I am recognized as an effective communicator across executive functions, including legal, BD, finance, R&D, clinical development, and process development. I have led a variety of transaction types including M&A, joint ventures, complex licensing, collaborative development and external funding. I have experience in Global Health development programs and U.S. Government collaborations, contract negotiation and compliance. I have a solid track record of enhancing business value through maximizing all dimensions of IP strategy (portfolio management, freedom-to-operate (FTO) risk mitigation, and value extraction through partnering and investment).

My Representative Technologies include:
Autoimmunity • Oncology • Inflammation • Infectious Diseases • Wound healing • Regenerative medicine • Antibody therapeutics • Bispecifics • Recombinant biologics • Vaccines • Adjuvants • Molecular Biology • Biodefense Countermeasures (Vaccines, Antitoxins, Single-use Medical Devices)

Timeline

  1. -
    Founder and Managing Director, LST Strategies LLC

    Upon leaving GSK, I founded a solo law practice dedicated to excellence in life science transactions - creating and nurturing collaborative interactions between biopharma companies, universities, and research institutions to advance development of innovative solutions to health challenges in the US and around the globe.

  2. -
    Immediate Past-President, Licensing Executives Society (USA & Canada) Inc.

    As Immediate-past President, I chaired the Society's committee on leadership and nominations and mentored other Board members.  The Society honored my service by awarding me the Frank Barnes Award for mentorship.

  3. -
    President and Chair of the Board, Licensing Executives Society (USA and Canada) Inc.

    As President, I streamlined the Board Committee structure and debuted a new strategy to develop a virtual content ecosystem, emphasizing ROI and fiscal prudence while investing in a new online community networking platform.

  4. -
    President-Elect and Chair-Elect of the Board, Licensing Executives Society (USA and Canada) Inc.

    As President-Elect, I developed and rolled out a program of virtual events for LES members experiencing career transitions due to the COVID-19 pandemic.  I was also a member of the Board's COVID-19 task force, which resolved a long-term financial obligation and mitigated financial risk during the pivot from in-person events to virtual platformed events.

  5. -
    Special Counsel, Vaccines Legal Operations, GSK

    Role change that arose from a functional reorganization associated with GSK's spinout of its consumer healthcare business in 2021 and consolidation of the vaccines and pharmaceutical business segments.  Practice concentrated on interactions between GSK and U.S. Government entities. Handled license agreements, CRADAs, clinical trial agreements, and settlement agreements related to licenses and other financial matters.  Also lead counsel for nondilutive funding proposals and contracts (FAR and OTA) supporting the vaccines R&D pipeline.  Represented GSK in Government accounting audits, contract closeouts and a significant Termination Settlement Proposal.

  6. -
    Senior Counsel, Vaccines Legal Operations, GSK

    At GSK, I was the sole North American attorney for significant (over $1M) IP-driven business transactions to align the Vaccines pipeline with GSK's business strategy. I handled complex asset acquisitions, in-licenses, and collaboration agreements, as well as asset divestments (including site divestment) and termination/settlement agreements. I also negotiated multi-party collaborative clinical trial agreements and CRADAs. I provided the business with U.S. risk mitigation advice on royalty obligations and strategic alliances.  In addition, I was the sole North American attorney for the Vaccines portfolio of R&D contracts with U.S. government entities, including NIH/NIAID, BARDA and DARPA. 

  7. -
    Member, Board of Directors, Licensing Executives Society, USA and Canada (LES)

    LES is the leading multidisciplinary professional society for the business applications of IP rights and their management; for more than 50 years, LES has promoted best practices in IP transactions, IP protection, and IP strategy. As a Board member, I led a review and modernization of the Society's communications strategy, newsletters and website.    

  8. -
    Associate, Hamilton, Brook, Smith & Reynolds, PC

    I began my legal career at HBS&R, where I joined the firm's life sciences patent prosecution practice group.  I represented the Massachusetts Institute of Technology (MIT) and selected spin-out companies.

  9. -
    Associate, Testa, Hurwitz & Thibeault, LLP

    While at THT, I developed a life sciences patent practice.  I represented small and mid-cap biopharmaceutical companies and venture capital investors. Projects included patent portfolio development, patent invalidity and non-infringement opinions, and IP due diligence. In particular, I had strategic management responsibility for a large portfolio of regenerative medicine patents.

  10. -
    Associate General Counsel, IP, Biogen, Inc.

    Biogen-IDEC (NASDAQ: BIIB), originally Biogen, Inc., was founded in 1978, and is the oldest independent, global, fully integrated biopharmaceutical firm, and has a diversified biologics product portfolio for neurology, autoimmunity, and oncology disease indications.  I joined Biogen as Assistant General Counsel, IP and was promoted to Associate General Counsel, IP in September 2000.  While at Biogen, I was responsible for all IP matters relating to selected clinical- and late research-stage product development programs.  Key accomplishments included:

    I led all IP activities in support of new product launch of AMEVIVE® (alefacept) for treatment of psoriasis in United States and Europe, including: 

    • FTO investigation of all product components and key manufacturing steps 
    • IP risk mitigation including patent opinions and defensive pre-litigation plan in U.S., U.K., Germany, the Netherlands, France, Italy, Spain, Sweden and Switzerland
    • Brand development including trademarks, USAN/INN name, trade dress, website content, promotional materials, and pre-launch publication campaign
    • Secured U.S. patent term extension

    I was also the in-house team leader for Noelle v. Lederman, U.S. Patent Interference No. 104,415; together, the team secured a favorable decision of noninterference-in-fact, which cleared FTO obstacles from commercialization of a humanized monoclonal antibody therapeutic for autoimmunity and transplant indications.

    I managed licensee-licensor relationships with six different land-grant and private universities having conflicting and overlapping IP rights in a humanized monoclonal antibody product candidate.

    I was a lead negotiator in the in-licensing of neublastin, a recombinant biologic candidate for neuropathic pain.

  11. -
    Counsel, Foley Hoag LLP

    While at Foley Hoag (FH), I maintained a life sciences patent practice, in which I represented biopharmaceutical companies of all sizes and at all stages of corporate lifecycle. My projects included patent portfolio development, patent invalidity and non-infringement opinions, and IP due diligence.  In 2005, I led an investigation, analyzed and mediated resolution of an inventorship dispute between two tenured professors at Johns Hopkins University, which enabled both to commercialize neuroprotective therapeutic candidates with their respective startup companies.

  12. -
    Chief Intellectual Property (IP) Counsel, Emergent BioSolutions Inc.

    Emergent BioSolutions Inc. (NYSE: EBS) is a global specialty biopharmaceutical firm and a leading biodefense contractor, supplying its flagship vaccine, BioThrax (anthrax vaccine adsorbed) to the U.S. Strategic National Stockpile.  I served as the company's first Chief IP Counsel, founded its IP Department, supported its Initial Public Offering (IPO), and guided all IP aspects of its subsequent 9+ year growth through sequential M&A activities.

    I became a member of Emergent's Legal Affairs Division leadership team upon being promoted to Vice President in April 2009. I managed an IP department consisting of 8 patent professionals at 4 corporate sites across 8 time zones.  Together, we were responsible for management and oversight of the company's $5.2M annual IP budget.  As V.P., I led all aspects of corporate IP strategy, governance and compliance, including the following specific activities and accomplishments:

    • I was a core team member in all of EBS’s IP-driven in-bound M&A activities; responsible for IP due diligence and negotiation of IP-relevant terms, which led to the portfolio integration of IP assets aggregating over $391M.
    • I led negotiations of key out-bound license and co-development agreements to extract value aggregating over $259M from partnering of EBS’s pipeline candidates.
    • I led all IP diligence activities in support of EBS’s 2013 offering of $250M in Convertible Senior Notes. 
    • I developed and implemented innovative, business-centric IP strategic framework, including Master Plan and guidelines for IP portfolio management, FTO risk mitigation and value extraction from pipeline, which aligned all IP activities with the corporate strategy and growth plan.
    • I worked closely with R&D, business development, and executive management to leverage product IP strategies to attract biopharma development partners and nondilutive funding from government agencies (DoD, DHHS, DHS, NIH) and NGOs (The Wellcome Trust, the AERAS Global TB Initiative).
    • I was a Focus team member in companywide Enterprise Risk Management (ERM) and Risk Tolerance Framework initiatives; I was designated as the risk owner of all identified IP risks.
    • I developed a novel adaptation of ERM principles to management of IP FTO risks, which allowed the company to focus its resources on the highest priority FTO risks and thereby avoid all potential IP disputes for my entire 9.5 years of service to Emergent. 
    • I developed the company's suite of global IP policies and procedures and was responsible for employee training and compliance.
    • I led a process improvement initiative including Kaizen blitz on approvals process for scientific disclosures.
    • I was a member of the senior management team responsible for vetting company’s first two 5-year growth plans.
    • I chaired the company's executive-level IP Steering Committee, which made all significant IP portfolio and risk management decisions regarding pipeline and commercial products and technologies.
    • I was a focus team member for development of company core values and the “One Emergent” corporate culture.

    In my early years at Emergent, prior to becoming V.P., my key accomplishments included the following:

    • I led all IP aspects of formation and management of the Oxford-Emergent Tuberculosis Consortium (OETC), a joint venture between EBS and the University of Oxford, U.K.  OETC was the corporate vehicle for clinical development of Oxford's viral vectored tuberculosis vaccine, MVA85A. 
    • I led all IP aspects of formation and management of the Emerging Pandemic Influenza Consortium (EPIC), a joint venture between EBS and Temasek, the sovereign wealth fund of Singapore.  EPIC was the corporate vehicle for R&D evaluation of countermeasures (vaccines and monoclonal antibodies) for H5N1 avian influenza.
    • I coordinated multi-party European Patent Oppositions against third party patents covering viral vector technology relevant to EBS’s tuberculosis and influenza vaccine candidates
    • I led all IP diligence activities in support of EBS’s IPO, which raised $52.5M. 
    • I founded, structured and developed the IP department at EBS, with responsibilities for asset creation and management, FTO, risk mitigation, due diligence and transactional leadership in partnering negotiations.
  13. -
    Founder and Managing Director, Fenton IP Solutions LLC

    I created FIPS as a legal consulting firm to help small business and entrepreneurial innovators access the value of their current and future IP assets to achieve their strategic objectives. FIPS had a proactive and collaborative approach to assisting clients throughout the life cycle of IP-based business transactions (technology transfers, R&D collaborations, licensing, funding & investments, joint ventures, M&A, and asset sales).  FIPS achieved break-even status within its first six months of operations.

Proudest Accomplishment

I've taken a biotech company through its IPO, and I've launched a new biologic product in US & EP

Experience Highlights

  • Senior Counsel, Vaccines Legal Operations - Innovation and Business Development
    GSK Rockville MD
  • 11+ Years in Private Practice
    boston-based law firms
  • In-House IP Counsel
    Biogen, inc.
  • VP-Level Chief IP Counsel
    Emergent Biosolutions Inc.
  • Founder and Managing Director
    Fenton IP Solutions LLC

Education Highlights

  • B.Sc. Biochemistry 1984
    trinity college, hartford ct
  • J.D. cum laude 1992
    suffolk university law school, boston ma
  • Admitted to Practice Law
    MA, MD, DC
  • Certified Licensing Professional
    2015-present
  • U.S. Patent Attorney
    1993-Present

Causes

  • Advancing Innovation
    LES Leadership in public policy and legislation affecting value of patent and other ip rights

Interests

  • Addressing Global Health Challenges
    harnessing innovation and collaboration to solve intractable public health issues
  • Intersection of ERM with IP Strategy
    Novel uses of enterprise risk mitigation principles to communicate ip freedom to operate issues

Results

  • 391M
    aggregate value ($) of acquired ip assets
  • 5.2M
    Annual budget ($) of ip department managed
  • 259M
    Aggregate Value ($) of Licensing transactions

Skills

  • biologic therapeutics
  • collaborative development
  • cross-border transactions
  • vaccines
  • life science
  • due diligence
  • IP governance & Compliance
  • Trade secrets
  • Trademarks
  • Patents
  • Licensing
  • Technology Transfer
  • Intellectual Property
  • IP FTO Risk Management
  • IP Strategy

Location

United States

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