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Jane Massey Licata

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Jane Massey Licata has a strong technical background in biology and biochemistry having received her Ph.D. in 1978. A practicing attorney since 1984, Dr. Licata has extensive experience in  intellectual property and regulatory law with respect to developing, defending and enforcing patent and regulatory strategies and portfolios, creating and maintaining FTO in competitive environments, strategic analysis and due diligence with respect to M&A, strategic advising concerning compliance and enforcement actions, and technology transfer. She has wide experience with biotechnology, medical and natural products as well as AI-enabled technology.

 

Dr. Licata is licensed to practice law in Pennsylvania, New Jersey and Florida, and is a registered patent attorney. She also teaches at Rutgers and Drexel universities. Her courses include AI in Healthcare, Regulation of Medical Products, FDA Law, Health Law and she is also a frequent lecturer with respect to bioethics and emerging technologies and healthcare.

Education

Experience

Professional Licenses & Affiliations

Community & Board Memberships 

Publications & Presentations

J.D., 1984, Rutgers School of Law, Camden, New Jersey


Ph.D., 1978, University of Hawaii, Honolulu, Hawaii


B.A., 1975, Western Maryland College, Westminster, Maryland
 

Principal, Law Offices of Jane Massey Licata and successor firm Licata and Tyrrell. P.C., Marlton, NJ - April 1993 to present

Jane Massey Licata and Kathleen A. Tyrrell have worked together since 1993 to creatively and effectively protect biotechnology inventions. Working with scientists at non-profit research institutions across the U.S. and around the world, Licata & Tyrrell have been translating science into invention®. A keen understanding of the technology and the law and of the basic research culture and environment have resulted in issuance of groundbreaking patents covering stem cells, antisense therapeutics, gene therapy, molecular diagnostics and new drug targets for their clients.  Expertise and experience in both the intellectual property and regulatory arenas allow clients to move from concept to product to market seamlessly with a single law firm. Licata & Tyrrell work with their clients to develop strategic approaches to creating and building strong, worldwide patent portfolios which are licensed by leading biotechnology and  pharmaceutical companies. Licata & Tyrrell also understand the requirements and challenges for patenting and developing biotechnology in a start up environment and work with innovators and the venture community to develop IP created in academic settings. Licata & Tyrrell is dedicated to patenting biotechnology inventions created by scientists in non-profit research institutions to serve the public good.

Adjunct Professor Rutgers School of Law, Camden, NJ and Drexel School of Law, Philadelphia, PA - 1999 to present

Dr. Licata has helped develop a curriculum which addresses all aspects of the creation, prosecution, commercialization and enforcement of intellectual property rights.  She also teaches FDA Research and Health Law, focusing on the research and regulatory process with respect to medical products. 

Senior Associate, Woodcock Washburn Kurtz Mackiewicz and Norris, Philadelphia, PA - April 1989 to April 1993

Biotechnology patent prosecution practice with a regional intellectual property law firm; also health law including research, regulatory compliance and ethics.

Director, Office of Technology Transfer, Thomas Jefferson University, Philadelphia, PA - April 1987 to April 1989

Responsible for arranging, negotiating, preparing and administering research/development and licensing agreements for University developed technology. Administrated the University's patent, trademark and copyright policies, reviewed and evaluated technical disclosures, assessed patentability and commercial potential, monitored patent prosecutions. Developed innovative technology transfer mechanisms including joint ventures, incubation facilities and partnership grants with state and federal initiatives. Monitored regulatory requirements for investigational drugs and devices and served on Institutional Review Board.

Director, Office of Legal Management, University of Medicine and Dentistry of New Jersey, Newark, NJ - March 1985 to April 1987

Developed and managed technology transfer program for New Jersey's medical university which includes three medical schools and a dental school. Returned as Acting Director (as outside contractor), 2003-2005.

Associate, Cohen, Shapiro, Polisher, Shiekman and Cohen, Philadelphia, PA - Oct. 1983 to Feb. 1985

Environmental litigation associate, advised regarding environmental compliance for major pharmaceutical companies.

Scientist, U.S. Environmental Protection Agency, Region III, Philadelphia, PA - Sept. 1980 to Oct. 1983

Expert in water quality issues; worked as expert witness on cases brought by Department of Justice; developed environmental policies and regulations.

Biologist (Post-doctoral), Academy of Natural Sciences of Philadelphia, Philadelphia, PA - Oct. 1979 to Sept. 1980

Researched ecological impacts of pollution sources.

Graduate research and teaching assistant, University of Hawaii, Honolulu, Hawaii - August 1975 to June 1978

Taught undergraduate botany and graduate level biochemistry courses; research assistant on impacts of heavy metals on physiology.

  • New Jersey, Pennsylvania, Florida and Philadelphia Bar Associations

  • American Bar Association

  • American Intellectual Property Law Association

  • New Jersey Intellectual Property Law Association

  • Philadelphia Intellectual Property Law Association

  • Association of University Technology Managers (AUTM)

  • Federal Circuit Bar Association

  • Board Member, Walter Rand Research Institute (WRI)

  • Board Member, Scholastic Rowing Association of America (SRAA)

  • U.S. Rowing (fully licensed U.S. referee)

Uncertainties in Pharma Law Around the World, Presented at Federal Circuit Bar Association Global Series, Amsterdam, The Netherlands, October, 2022 Association of University of Technology Managers Software Licensing Course: AI in Healthcare, Baltimore, Maryland, September 2022 Challenges in Pharma and Biologics in COVID Times, Presented at Federal Circuit Bar Association Global Series (On Line), April 2021 Introduction to Patents and Research Commercialization, University of Hawaii, Hilo, October 2019 Innovation Policy and Systems, Presented at Federal Circuit Bar Association Global Series, Honolulu, Hawaii, October 2019 Introduction to Patents and Research Commercialization, University of Hawaii at Manoa, July 2019 Secondary Patent Challenges: Pharmaceuticals and Life Sciences, Presented at Federal Circuit Bar Association Global Series, Ottawa, Canada, October 2018 Staying in the Game: How Universities Can Play a Role in Commercial Therapeutics and Diagnostics, University of Hawaii at Manoa, May 2018 Tribal Sovereign Immunity in US IPR proceedings from a legal and policy perspective, Presented at Federal Circuit Bar Association Global Series, London, England, September 2017 Strategic Patenting Opportunities and Challenges: a U.S. Perspective. Presented at Federal Circuit Bar Association Global Series, Paris, France, October 2016 Protecting Your Invention: Patent Law Basics. Presented at University of Hawaii Cancer Center in Kakaako, University of Hawaii, June 2016 and November 2016 Inventor’s Guide to America Invents Act of 2011 (AIA). Presented March 2012 and November 2012 Inventor’s Guide to America Invents Act of 2011 (AIA). Presented at Office of the General Counsel, Patent Reform Law Presentation, Kellogg Auditorium, Dartmouth College, November 2011 Novelty Requirement of §102 (Chapter 4) (and LM Plunkett) October 2010 What is Intellectual Property and Who Owns It? Presented at the University of the Arts, Philadelphia, PA, March 2010 Insights for Facilitating Prosecution of Biotech Applications in the USPTO, Chartered Institute of Patent Attorney (CIPA) Annual Biotechnology Conference, West Sussex, England, November, 2009 The Ins and Outs of Patenting Your Biotechnology Inventions, presented at Business Development Seminar Series, The Wistar Institute, July 2009 How to Protect Intellectual Property and Still Publish, AUTM Technology Transfer Practice Manual, 3rd Ed., 2007 Keeping a Lid on Pandora’s Box: Strategies for Protecting Genetic Privacy, 2007, New Jersey Lawyer, No. 245, pages 9-13 The Art of the Appeal: Critical Tools for Protecting Children in Custody Cases. Domestic Violence Legal Empowerment and Appeals Project (DVLEAP) seminar, June 2007 What Every Technology Manager Needs to Know About FDA Law, Association of University Technology Managers (AUTM) Eastern Regional Meeting, June 2007 What Every Technology Manager Needs to Know About FDA Law, Association of University Technology Managers (AUTM) Annual Meeting, March 2007 What Every Technology Manager Needs to Know About FDA Law, Association of University Technology Managers (AUTM) Annual Meeting, March 2006 Patent Pooling: A U.S. Perspective, VINIP Annual Meeting, 2006 Domestic Violence, Children and the Courts, Domestic Violence and Child Mistreatment Conference, Rowan University, October 2005 An Intellectual Property Protection Primer, Monell Chemical Senses Center, Philadelphia PA, presented September 2005 Intellectual Property Protection Primer, AUTM Technology Operations and Organization Licensing Skills Course (TOOLS), September 2005 Material Transfer Agreements (MTAs): The Agreements We Love to Hate, Association of University Technology Managers (AUTM) Eastern Regional Meeting, July 2005 What Every Technology Manager Needs to Know About FDA Law, Association of University Technology Managers (AUTM) Annual Meeting, February 2005 Perspectives on Discrimination Based on Genetic Information, HHS Secretary’s Advisory Committee on Genetics, Health and Society, October 2004 Recent Court Decisions and Their Impact on Academic Technology Transfer, Ivy League Consortium Meeting, October 2004 Genetic Non-Discrimination: Implications for Employer Sponsored Health Plans, Testimony before the Committee on Education and the Workforce, U.S. House of Representatives, July 2004 Licensing 101, Association of University Technology Managers (AUTM) Eastern Regional Meeting, May 2004 Patents and Copyrights: An Ethical Perspective. Presented at The University of Medicine and Dentistry of New Jersey, March 2004 Intellectual Property: Application, Issues and Principles for the Research Administrator, National Council of University Research Administrators Annual Meeting, November 2003 Valuing The Deal When Royalty Stacking is Involved, Association of University Technology Managers (AUTM) Annual Meeting, February 2003 Crafting License Agreements: How to Creatively Address Issues of Accountability, Confidentiality and IP Protection, New Jersey Intellectual Property Law Association, October, 2002 Licensing 101-Contract Language, Association of University Technology Managers (AUTM) Eastern Regional Meeting, July 2002 Streamlining the Contracting Process: Creative Approaches to Solving Common Dilemmas, Drug Information Association (DIA) Meeting, March 2002 Genetic Privacy and Genetic Discrimination, The Pennsylvania and Delaware Valley Women Law Teachers Ninth Annual CLE Conference, February 2002 Genetic Non-Discrimination: Implications for Employer Sponsored Health Care Plans, Testimony before the Committee on Education and the Workforce, U.S. House of Representatives, September 2001 Patent Prosecution and Technology Transfer from Three Perspectives: Academia, Industry, and Government, Middle Atlantic Regional Meeting of The American Chemical Society, June 2001 Working with Outside Counsel: Civilian Control of Lawyers, Association of University Technology Managers (AUTM), March 2001 Clinical Trials Agreements: Analysis and Resolution of Often Negotiated Issues, Association of Technology Managers (AUTM) Canada Basic Licensing Course, October 2000 Patent Primer: When and How to Patent a Biotech Invention, Association of University Technology Managers (AUTM) Annual Meeting, February 2000. Clinical Trial Agreements, Association of University Technology Managers (AUTM) Annual Meeting, February 2000 Patenting Biotechnology Inventions in the European Patent Office, Fourteenth Annual Joint Patent Seminar, April 1998 Intellectual Property Primer, presented at The Stevens Institute of Technology, March 1994 The Case of ALG: A hospital's liability for use of an unapproved organ transplant drug, NJSBA Health and Hospital Law Section Newsletter, VIII(2):1-2, 1994 Bristol-Myers v. Danbury: FDA submissions as prior art, Tenth Annual Joint Patent Seminar, III:19-23, 1994 (and KA Tyrrell) From R&D to Market: A life cycle approach to developing your biotechnology product, device or drug, Environ, Houston, TX, 1994 Citizen suits - help or hindrance in the enforcement of environmental statutes: the Clean Water Act experience, Environmental Forum 3(11):20-25, 1985 (and CA Licata) Right-to-know: toxic substance disclosure is now the law, Pa. L.J. Rptr. VII(44)1:11, 1984 (and PL Feldman) Pollution insurance as a regulatory tool: is mandatory legislation needed? Environmental Forum 3(4):43-77, 1984 The environmental implications of Mount Laurel II, Rutgers Law Review 15(3):627-640, 1984 (and CA Licata) Physicochemical influences on phytoplankton production in a tropical alpine lake, Arch. Hydrobiol. 91(2):133-143, 1981 Growth of corn in saline waters, Physiol. Plant, 50(1):71-73, 1980 (and SM Siegel, BZ Siegel, P Lahne and J Chen) The diatoms of contemporary and ancient sediments from Lake Waiau, Hawaii, and their geochemical environment, Rev. Palacobot. Palynol. 27:77-83, 1979 Lake Waiau: a study of a tropical alpine lake, past and present, Ph.D. dissertation, University of Hawaii, 1978 Morphological characteristics of the diatom flora of Lake Waiau; variation and speciation, Pac. Sci. 32(2):215-217, 1978 Sea-water agriculture utilizing a solar still greenhouse. Presented at Oceans '76, Washington, DC, 1976 (and TW Speitel, BZ Siegel, W Cade and A LaRosa)

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