Jane Massey Licata
Licata & Tyrrell P.C.
66 East Main Street
Marlton, NJ 08053
Tel: (856) 810-1515
Fax: (856) 810-1454
E-mail: JMLicata@licataandtyrrell.com
EDUCATION/PROFESSIONAL
Strong background in biology and chemistry. Academic honors. Member Sigma Xi, Phi Kappa Phi, Beta Beta Beta. Registered Patent Attorney. Also licensed to practice law in Pennsylvania, New Jersey and Florida.
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.
EXPERIENCE
September 1999 to present
Adjunct Professor Rutgers School of Law, Camden, NJ and Drexel School of Law, Philadelphia, PA
Teaching Patent Law, Patent Prosecution and Licensing and Drug and Device Law
Over the past decade, Dr. Licata has helped develop a curriculum which addresses all aspects of the creation, prosecution, commercialization and enforcement of intellectual property rights including courses in patent application drafting and prosecution, licensing and litigation. She also teaches FDA Law, focusing on the regulatory process with respect to drug and biotechnology products.
April 1993 to present
Principal, Law Offices of Jane Massey Licata and successor firm Licata and Tyrrell. P.C., Marlton, NJ
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.
April 1989 to April 1993
Senior Associate, Woodcock Washburn Kurtz Mackiewicz and Norris, Philadelphia, PA
Biotechnology patent prosecution practice with a regional intellectual property law firm; also health law including research, regulatory compliance and ethics.
April 1987 to April 1989
Director, Office of Technology Transfer, Thomas Jefferson University, Philadelphia, PA
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.
March 1985 to April 1987
Director, Office of Legal Management, University of Medicine and Dentistry of New Jersey, Newark, NJ
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.
Oct. 1983 to Feb. 1985
Associate, Cohen, Shapiro, Polisher, Shiekman and Cohen, Philadelphia, PA
Environmental litigation associate, advised re/environmental compliance for major pharmaceutical companies.
Sept. 1980 to Oct. 1983
Scientist, U.S. Environmental Protection Agency, Region III, Philadelphia, PA
Expert in water quality issues; worked as expert witness on cases brought by Department of Justice; developed environmental policies and regulations.
Oct. 1979 to Sept. 1980
Biologist (Post-doctoral), Academy of Natural Sciences of Philadelphia, Philadelphia, PA
Researched ecological impacts of pollution sources.
August 1975 to June 1978
Graduate research and teaching assistant, University of Hawaii, Honolulu, Hawaii
Taught undergraduate botany and graduate level biochemistry courses; research assistant on impacts of heavy metals on physiology.
MEMBERSHIPS
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; American Society of Law, Medicine & Ethics; Association of University Technology Managers (AUTM); Licensing Executives Society (LES): Food and Drug Law Institute (FDLI); Biotechnology Industry Organization (BIO); U.S. Rowing (fully licensed U.S. referee) and Eastern Band of the Cherokee Nation
- Biography
- Publications
- Courses Taught
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, AUTM Eastern Regional Meeting, June 2007
What Every Technology Manager Needs to Know About FDA Law, AUTM Annual Meeting, March 2007
What Every Technology Manager Needs to Know About FDA Law, 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, presented September 2005, Monell Chemical Senses Center, Philadelphia PA
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, AUTM Eastern Regional Meeting, July 2005
What Every Technology Manager Needs to Know About FDA Law, 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 22, 2004
Licensing 101, AUTM Eastern Regional Meeting, May 2004
Patents and Copyrights: An Ethical Perspective, presented March 2004 at The University of Medicine and Dentistry of New Jersey
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, 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, 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 6, 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, 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, TW, BZ Siegel, W Cade and A LaRosa)