Seth D. Levy

What do you focus on?

My practice encompasses two main areas, leveraging my background in biological engineering and experience in business transactions.

Technology Transfer

I support tech transfer programs at universities, research institutes and academic medical centers. My experience includes patent procurement and portfolio management, coordinating complex research arrangements, negotiating commercial transactions involving IP, resolving related disputes and coordinating IP enforcement activities. I also advise on the development and expansion of tech transfer programs; the operation of incubators, accelerators and venture funds; and the revision of institutional IP policies to reflect contemporary tech transfer issues. I am intimately familiar with tech transfer operations and the unique environment in which these programs exist.

IP and Research Transactions

I represent academic and health care institutions in technology and research-driven transactions. I also work with companies in the private sector that do business with such institutions. My work in this area includes drafting and negotiating license agreements, research and development agreements, clinical trial agreements, consulting agreements and a range of other agreements to effectuate deals in the arenas of research, health care and intellectual property.

What do you see on the horizon?

Technology transfer offices at academic institutions are developing and deploying increasingly sophisticated programs and service offerings to enhance their institution’s research activities, de-risk their innovations, generate revenue, benefit the public and stimulate economic growth.

I believe technology transfer offices will become more active enforcers of their IP against infringers. I expect these institutions to increasingly leverage litigation to enhance their licensing efforts.

Presentations

• “Collaborations During the Pandemic: Issues and Tips When Considering Partnerships,” BioLabs@NYULangone, Webinar, June 3, 2020
• “Intellectual Property Issues in Clinical Trials Agreements," UCLA In-House Team, Los Angeles, CA, March 11, 2020
• “Legal Issues for International Healthtech Companies," Cedars-Sinai Innovation Space, Los Angeles, CA, March 5, 2020
• “Direct Enforcement of University IP—A Case Study of UC Santa Barbara’s Enforcement of Patent Rights Against Retailers,” AUTM 2019 Eastern Region Meeting, Raleigh, NC, October 3, 2019
• “Direct Enforcement of University IP—A Case Study of UC Santa Barbara’s Enforcement of Patent Rights Against Retailers,” AUTM 2019 Western Region Meeting, Seattle, WA, September 20, 2019
• “Advocacy 101,” It Gets Better Global Summit, New York, NY, June 27, 2019
• “Corporate Perspectives on Sourcing Early-Stage Innovation,” USC Innovation Summit, Los Angeles, CA, March 27, 2019
• “Current Trends in Sublicensing Academic IP,” University of California Fall IP Managers Systemwide Meeting, Santa Cruz, CA, November 6, 2018
• “Advancing the University’s Mission Through the Monetization of Intellectual Property,” AUTM 2017 Eastern Region Meeting, Boston, MA, October 3, 2017
• “Preparing Life Sciences Companies for Chinese Opportunities,” Office of Economic Development, Mayor Eric Garcetti, Los Angeles, CA, July 18, 2017
• “Building an IP Strategy,” LA BioStart Legal Basics Program, Los Angeles, CA, July 14, 2017
• “Introduction to Tech Transfer,” LA Bioscience Hub, Los Angeles, CA, June 16, 2017
• “Navigating Through the Fog: Launching a Startup While Avoiding the Reefs,” UCSB Office of Technology & Industry Alliances, Santa Barbara, CA, May 11, 2017
• “Legal Issues for Digital Health Companies,” Cedars-Sinai Medical Center Healthcare Accelerator, Los Angeles, CA, February 16, 2017
• “Licensing IP from Universities,” Biocom Lunch & Learn at Lab Launch Inc., Monrovia, CA, January 19, 2017
• “U.S. Patent Law Update,” The 2016 Chartered Institute of Patent Attorneys (CIPA) Life Science Conference, Brighton, UK, November 15, 2016
• “Legal Issues in Supporting a New Innovation Center,” Higher Education Real Estate Lawyers Conference (HEREL) Conference, Manchester, NH, September 16, 2016
• “U.S. Trends in Technology Transfer,” Farrer & Co. Roundtable Session, London, UK, October 2014
•  “Biotech Claims Drafting,” The Chartered Institute of Patent Attorneys Seminar, London, UK, October 2014

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

Representative Experience

• Represent The Regents of the University of California in a groundbreaking patent enforcement campaign to protect its rights in a revolutionary new generation of light bulb technology known as filament LED that was invented by a Nobel laureate-led team at UC Santa Barbara. As the accused products are made by foreign manufacturers, this campaign is brought against major U.S. retailers in parallel proceedings before the U.S. International Trade Commission and in the U.S. District Court for the Central District of California.
• Assist Cedars-Sinai Medical Center, a nonprofit hospital and multi-specialty academic health science center, on a range of patent prosecution and tech transfer matters, including licensing and spin-off transactions, equity investments, research and technology development collaborations and IP enforcement. A recent matter involved the licensing and enforcement of patent rights on methods of diagnosing and treating irritable bowel syndrome (“IBS”), a chronic condition affecting more than 15% of the general population. Cedars-Sinai doctors invented groundbreaking treatments for IBS, and the NP team helped Cedars-Sinai patent these discoveries and license them to Salix Pharmaceuticals. After Actavis Laboratories FL, Inc. sought FDA approval to market a generic competitor drug, NP represented Cedars-Sinai in litigation with its licensees against the infringing generic competitor.
• Represented CHA Biotech Co., Ltd., a Korean-based biotech company, in forming and managing a series of issues through a joint venture called Stem Cell & Regenerative Medicine, Inc., which was established with Ocata Therapeutics, Inc. (f/k/a Advanced Cell Technology, Inc.) before Ocata was acquired by Astellas. The joint venture focuses on the development of stem cell technologies.
• Represent UC Santa Barbara in several iterations of negotiations with one of its biotech spinoffs. This work included restructuring UC Santa Barbara’s equity and license relationship with the company to address the complexities of the company’s sublicensing partnerships with numerous pharmaceutical companies.
• Assist the California Institute of Technology (Caltech) with a range of patent prosecution matters.
• Assist the University of Southern California (USC) with a range of patent prosecution matters.
• Represented Alphazyme, a developer, manufacturer, and global distributor of molecular biology enzymes, in a sub-licensing agreement with Dyadic International, a global biotechnology company focused on improving and applying its proprietary C1 expression system to help drug developers and manufacturers bring biologic drugs to market. The sub-licensing agreement includes an equity stake, milestone payments, and royalties upon the commercialization of C1-expressed Alphazyme products.
• Represented Serimmune, an immune intelligence company, in a collaboration agreement with Twist Bioscience Corporation to identify and evaluate SARS-CoV-2 therapeutic antibody candidates from Twist libraries using Serimmune's Serum Epitope Repertoire Analysis (SERA) platform, which maps the antigenic targets of antibody repertoires.
• Represent Dignity Health, a California-based not-for-profit public-benefit corporation that operates hospitals and ancillary care facilities in several states, in patent prosecution matters as well as a range of other technology transfer issues, including revising its IP policy, supporting its material transfer agreement (MTA) contracting for its internal biobanks and other exchanges of research materials and representing it in multiple license negotiations for biotech and digital health technologies.
• Represented Global Pediatric Surgical Technology and Education Project, Inc. (a/k/a GP STEP), a California-based nonprofit, in its collaboration with medical device manufacturer, SunMed, LLC, to distribute affordable surgical equipment to pediatric surgeons around the world.