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Seth D. Levy

Partner
Los Angeles
Phone: 213-629-6161
Fax: 877-644-1571
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SETH D. LEVY

Seth D. Levy is a partner in Nixon Peabody LLP’s Patents practice group and the firm’s Los Angeles office. With a deep background in biological engineering, his practice focuses on patent prosecution and intellectual property management programs, primarily in the life sciences area.

In addition to technology-based companies, he has extensive experience working with technology transfer programs at educational and health care institutions. Seth works with clients to procure patents for their innovations, license these patents, and enforce them against possible infringers. He coordinates complex research arrangements, negotiates commercial transactions involving intellectual property, and resolves related disputes.

Seth’s practice includes:

  • Managing patent procurement for innovations for a wide variety of technologies, including biotechnology and life sciences.
  • Representing academic institutions in IP licensing to private companies and investors and structuring sponsored research agreements, clinical trial agreements, material transfer agreements, and inter-institutional agreements with nonprofit and for-profit collaborators.
  • Representing emerging companies in intellectual property licensing and in acquiring IP assets.
  • Conducting IP due diligence in connection with mergers and acquisitions for businesses in a wide variety of technologies and industries.
  • Serving as outside general counsel for early stage technology companies.

Presentations

  • “Legal Issues: Mayo v. Prometheus, Update on America Invents Act, and More”, AUTM Western Region Meeting, November 2012
  • “U.S. Patent Reform: An Update and Discussion of Its Impact on Technology Transfer,” AUTM Western Region Meeting, September 2011
  • “Improving the Odds,” AUTM Annual Meeting, February 2011
  • “Top Tips from Outside Counsel,” AUTM Western Region Meeting, October 2010
  • “Tech Transfer—Doing Business with Academic Institutions,"” October 2010
  • “Seth Levy on Patent Procurement,” The Launch Hour, July 2010
  • “Federal Funding and Tax Exemption: compliance throughout the patent process and commercialization activities,” AUTM Western Region Meeting, July 2008
  • “Patent Issues for Life Sciences Lawyers,” AHLA Life Sciences Law Institute, May 2008

Publications

  • “Intellectual Property and Publication Issues in Clinical Trial Agreements,” American Health Lawyers Association Member Briefing, April 2013
  • “Patent Protection in Medicine and Biotechnology: An Overview,” Journal of Health and Life Sciences Law, June 2011
  • “License Lessons: Don’t overlook key elements in patent-related licensing agreements,” GC California, Nov./Dec. 2009
  • “Back to School: Licensing Patents from Academic Institutions,” GC California, November 2008
  • “Get Ready for Change,” GC California, June 2008

Representative Experience

  • Patent services for a large public technology focused university.
    Preparing and prosecuting patent applications for the university in areas such as neural prosthetics, petroleum engineering, and nanotechnology.
  • Patent services for an emerging life sciences company.
    Prosecuting patent applications and providing transactional due diligence support in connection with proprietary medical devices and consumer products brand of germ-fighting products.
  • Patent services for large pet-related charity.
    Prosecuting patent applications for an animal microchip management system.
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  • Patent services for large lifestyle marketing and media company.
    Preparing and prosecuting utility and design patent applications for the company’s consumer products.
  • Patent services for large southern California university.
    Patent prosecution in various life sciences disciplines, including stem cell technologies, medical diagnostics, and nanotechnology.
  • Technology transfer for large health care system.
    Providing patent prosecution and intellectual property counseling services for a range of medical and hospital-based technologies.
  • Technology transfer for large academic medical center.
    Handling domestic and foreign patent prosecution, intellectual property licensing, and a variety of research-oriented agreements for a wide range of biotechnical and medical technologies developed at institution. Supporting the hospital’s technology transfer operations, and providing strategic counseling to enable the hospital to protect, leverage, and enforce its intellectual property assets.
  • Multi-party licensing and research arrangement for multistate nonprofit health system and its spinoff company.
    Negotiated a research and licensing arrangement among a multistate nonprofit health system, its spinoff company, and a large international pharmaceutical company to further research, develop, and commercialize certain cancer-related technology.
  • Licensing agreements for multistate nonprofit health system.
    Represented a nonprofit health system in structuring a settlement and license agreement with a large biotechnology company, resulting in the withdrawal of an opposition by the company to a European patent owned by the health system and the licensing of the subject technology to the company for research and development purposes.
  • R&D venture formation for regional health system.
    Represented a nonprofit regional health system in the Pacific Northwest in forming a venture focused on the research and development of medical isotope technology.
  • Research arrangement for Korean university.
    Represented a Korean university in establishing a research arrangement with a psychiatric facility associated with a private U.S. university, to conduct collaborative research in stem cell programming factors.
  • Asset sale and technology licensing for an emerging company.
    Represented developer of battery recycling technology in the sale of intellectual property assets and cross-licensing of technology with an international secondary lead producer with operations in the U.S. and abroad.
  • Asset sale for medical device company.
    Represented a privately held medical device company in selling its catheter tip placement business and technology.
  • Licensing agreements for biotech company.
    Negotiated a license to technology and associated intellectual property allowing the generation of human embryonic stem cells (hESCs) using a single-biopsy approach that does not destroy the developmental potential of embryos. Negotiated a license to retinal pigment epithelial (RPE) technology—a stem cell technology useful in treating certain diseases of the eye, and among the first stem cell therapies to receive FDA approval to go into clinical trials.
  • Licensing agreements for European emerging company.
    Negotiated intellectual property license with European manufacturer for use of proprietary resin technology in sporting goods products.
  • Patent services for large multinational investment bank.
    Conducted due diligence in connection with potential financing of ongoing patent litigation in the area of Internet sales.
  • Research arrangement for biotech company.
    Represented a developer of RNA-based drugs in structuring a research arrangement with a charitable organization in the United Kingdom focused on finding a cure for Duchenne Muscular Dystrophy.
  • Outside general counsel.
    Served as general counsel to nonprofit organization focused on addressing the challenges of LGBT teen suicide, bullying, and harassment. Currently serving as outside general counsel to media production company.
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Affiliations

  • Board of Directors, OneJustice
  • Board of Directors, ACLU Foundation of Southern California
  • Immediate Past Chair, Life Sciences Practice Group, American Health Lawyers Association
  • Board of Directors, Iola Foundation d/b/a It Gets Better Project
  • Planning Committee, Association of University Technology Managers (AUTM) Western Region Meeting, 2009–2013

Press

Media Clips

    • Top 40 Angelenos to Know in Intellectual Property Law
      Los Angeles Business Journal | October 29, 2012

      Los Angeles Patents partner Seth Levy is profiled in this special section highlighting “Who’s Who” in intellectual property in the region.

    • Business of Law: Nixon Peabody Expands IP Practice in L.A. with Davis Wright Team
      Bloomberg News | May 8, 2012

      This article highlights the arrival of Los Angeles Patents and Life Sciences partner Seth Levy and his team.

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    Conferences/Speaking Engagements