Charles Calkins

Charles W. Calkins practices intellectual property law with a focus on patent law and intellectual property transactions. Mr. Calkins, a registered patent attorney, has more than 25 years of experience in client counseling and portfolio management in patent procurement, licensing and enforcement, primarily in the life sciences, chemical, medical and computer software arts.

His current practice includes a focus on the corporate and transactional aspects of intellectual property, including licensing, research and development/joint venture agreements and merger, acquisition and/or equity investment due diligence.

He has been involved in well over 100 transactions in a variety of technologies including aerospace, pharmaceuticals, commodity futures trading, medical devices, personalized genetic medicine, semiconductors and DNA sequencing technologies including NextGen sequencing.

Mr. Calkins’ experiences allow him to understand the business value of intellectual property and work with clients to maximize return on their investments and/or acquisitions. Mr. Calkins has worked with companies, investment banks, private equity groups, venture capitalists and other institutional investment groups to conduct due diligence and provide counseling relating to potential investments, acquisitions and/or mergers ranging in size from several hundreds of thousands of dollars to more than one billion dollars.

In addition to his legal practice, Mr. Calkins is a Chair of the Piedmont Angel Network, an investor in over forty emerging technology companies and active in the regional and national technology communities. He is also past Chair of the Scientific Advisory Board at University of North Carolina Greensboro.

Experience:

• Represent a leading clinical laboratory services provider in intellectual property related services, including freedom to operate analyses, patent license negotiation and review, collaborative research and development agreement preparation and analysis, patent prosecution and litigation services and due diligence and pre-litigation counseling. Technologies include clinical diagnostic services; robotics; bioinformatics; genome mapping; genetic testing; gene mapping and counseling; companion diagnostics; blood testing services, and biotechnology.
• Represented a major U.S. financial institution its investments and equipment loans to emerging life sciences companies, including performing merger and acquisition due diligence, document preparation and negotiation, and transaction closing work. The due diligence work involved reviewing patent estates and related intellectual property assets, analysis of joint ventures, collaborative research agreement and patent licenses, for technologies including, small and large molecule therapeutics, medical devices, recombinant DNA technologies, microfluidic devices and related laboratory techniques and equipment.
  The firm served as lead counsel on behalf of a health care company in the Southern District of Illinois against charges of patent infringement by Document Generation Corporation, an Acacia subsidiary. The lawsuit relates to electronic medical record technology. Defendants in the case were successful in persuading the U.S. Patent and Trademark Office to reexamine the patent in suit. The litigation is currently stayed pending the outcome of the reexamination proceeding.
• Provided intellectual property related services, including patent preparation and prosecution in automotive fabrics, knitwear and medical prostheses’ fabrics. We also successfully defended the client’s manufacturing contractor in a patent infringement action relating to automotive storage nets (trunk nets). We negotiated a dismissal of the action. We also represent our client in patent counseling, prosecution, and transactional matters, including negotiating contracts with customers and suppliers.
• The firm assisted a global supplier of systems and services to the aerospace and defense industries with their acquisition of optical and infrared sensing technology from a privately-held defense contractor. The firm’s work included pre-acquisition due diligence relating to the technology and related intellectual property. The firm also assisted in the preparation and review of acquisition and licensing documents in the transaction.
• The firm assisted an aerospace manufacturer with their acquisition of semiconductor and infrared sensing technology. The firm’s work included pre-acquisition and pre-licensing due diligence relating to the technology and related intellectual property. The firm also assisted in the preparation and review of acquisition and licensing documents in the transaction.
• The firm assists one of the world’s largest clinical laboratory network’s in pre-acquisition and pre-licensing due diligence relating to technology assets, including genetic markers, laboratory technologies and methodologies, microfluidics and related intellectual property. The firm also assists in the preparation and review of acquisition and licensing documents resulting from the due diligence.
• The firm assisted on of the world’s largest clinical laboratory networks in its acquisition of a leading laboratory automation supplier. Our work included due diligence on the supplier’s laboratory equipment and robotics technology. We also assisted with acquisition documents and post-closing transition of the intellectual property.
• The firm assisted one of the world’s largest clinical laboratory networks in its acquisition of an international biotechnology laboratory. Our work included due diligence on the laboratory’s oncology, virology, microfluidics and reagent technology and over 200 related patents and applications. We also assisted with acquisition documents and post-closing transition of the intellectual property.
• Represents one of the largest apparel companies in the world in protecting their hosiery, hosiery machinery, knitwear, casual wear, shoes, lingerie and related clothing technologies through the use of patents, trade secrets, trademarks and copyrights. The firm counsels the apparel company in IP related enforcement and transactional matters including patent and trademark infringement actions, patent licensing, freedom to operate opinions, consulting contracts, patent licenses, invalidity and non-infringement studies, patent enforcement studies and advertising. The firm protects key products worldwide with both design and utility patents and we work closely with the key technical and business personnel to identify and protect innovations with patents to achieve the company’s strategic corporate goals. We counsel the company with respect to its overall patent strategy, provide licensing services, and evaluate third-party intellectual property rights.
• Represented supplier of aerospace systems and services with patent and intellectual property related transactional issues in merger and acquisition transactions including due diligence and agreement drafting and negotiation. The firm also provided patent counseling, including non-infringement and freedom to operate counseling, and patent acquisition services. Technologies include remote sensing, optics, semiconductors and aluminum alloys.
• Represented a Massachusetts consulting firm in the preparation and negotiation of an asset purchase agreement wherein they sold patent assets and related underlying financial services product technology.
• Represents a Fortune 200 global consumer goods corporation and provides advice related to protecting their food production processes and packing and food product technologies through the use of patents, trade secrets, trademarks, and copyrights. Additionally, we provide advice related to enforcement and transactional matters including patent and trademark infringement actions, patent licensing, freedom to operate opinions, consulting contracts, patent licenses, invalidity and non-infringement studies, and patent enforcement studies.
• Represent Wake Forest University Health Sciences in preparing and prosecuting numerous U.S. and international patent applications, including applications relating to cancer diagnostics and/or treatment, the treatment of neuronal dysfunction. For example, patents have been granted for methods to prevent neurodegeneration, to detect elevated MAP-2 in melanoma, and the use of angiotensin antagonists to treat cancer. Also, the firm assisted with patent license counseling and negotiation, inventorship disputes, and inter-university agreement negotiations.
• Advised a global chemical company in patent acquisition, including patent application preparation and prosecution in the U.S. and foreign countries, for their carbon black, polymer emulsion, masterbatch, and polymer compositions inventions. The firm has appeared with the company in proceedings in the U.S. and European Patent Offices. Additionally, we have assisted the company with patent acquisition in the tantalum, niobium, and uranium ore processing, disposal, products and related technologies, and fumed silica technologies.

Education:

• Boston University, J.D. (1984)
• Massachusetts Institute of Technology, S.B., Chemical Engineering & Life Sciences

Admissions:

• District of Columbia (1989)
• Massachusetts (1985)
• North Carolina (1995)

Court Admissions:

• U.S. Patent and Trademark Office