“antlike persistency”
“If you can’t explain it simply, you don’t understand it well enough.”
Bio
Jeff Duncan has over 35 years of experience in intellectual property, 28 of those with the Chicago IP boutique, Brinks Hofer Gilson & Lione. While at Brinks, his practice included the full range of procuring, evaluating and litigating IP rights; negotiating and drafting technology agreements and advising large and small clients on winning IP strategies. Jeff’s technical background is Chemistry and his practice involved pharmaceuticals, biotechnology, diagnostics, medical devices and materials science. Jeff served as the head of Brinks’ Bio/Pharma practice group for several years and in the firm’s executive leadership.
In 2005, Jeff began teaching a Substantive Patent Law course at the John Marshall Law School, where more than half of his students have been visiting students from China and other Asian countries. In view of these relationships and the growth in work from Chinese clients and U.S. clients doing business in China, Jeff began spending about one month a year in China in 2007. During that time, Jeff lectured on IP rights at the national and regional offices of SIPO (the Chinese IP Office) and at conferences in more than 15 cities in China.
In 2012, Jeff left Brinks to go in-house with one of his favorite clients, a renewable chemistry company, Elevance Renewable Sciences, Inc. Jeff had been providing IP services for Elevance since its startup in 2007. As VP of IP, Jeff continued his role in building and maintaining a strong portfolio of patents and trademarks to protect the innovative technology and brand of Elevance. Jeff’s IP Team at Elevance built a portfolio of over 550 U.S. and foreign applications and issued patents. Jeff has also worked on several strategic partnerships for Elevance by negotiating, drafting and maintaining agreements, including JV’s and JDA’s as well as licenses in and licenses out. Many of these agreements involve partners in Asia and Europe. In 2015, Jeff was asked to expand his role at Elevance by taking the responsibilities of General Counsel.
In 2017, Jeff made the decision to work as Counsel for Elevance on a part time basis and to establish Aligned IP as an Intellectual Property law and consulting firm.
Positions
1984-2012 - Brinks Hofer Gilson & Lione (formerly Willian Brinks Olds Hofer Gilson & Lione and now Brinks Gilson & Lione)
Litigation - patent, trade secret and contract cases in Federal and State Courts
Patent Prosecution - prepared and prosecuted patent applications in many fields, such as pharmaceuticals, diagnostics, medical devices, food technology, materials science and office furniture.
Patent Analysis - provided validity and infringement opinions on single patents, e.g. in a freedom to operate mode, and entire portfolios, e.g. in a due diligence mode.
Technology Agreements - negotiated and drafted agreements, such as licenses and joint development agreements.
IP Portfolio Management - advised and executed on IP strategies and processes for several large and small clients.
Member of China Task Force
Head of Bio/Pharma Group
Director and Executive Committee
2005-2018 - John Marshall Law School
Adjunct Professor of Substantive Patent Law
Taught in-class and online version of class since 2011
2012-2018 - Elevance Renewable Sciences, Inc.
2012-2015 - VP Intellectual Property (http://www.elevance.com/index.php/company/leadership/)
with two other patent attorneys at Elevance and the help of outside law firms, built a portfolio of over 160 U.S. and 380 foreign patents and applications
established an invention tracking system and metrics to reduce the time between invention disclosure and patent application filing below 30 days
brought all U.S. patent preparation and prosecution in-house
retained a new service provider for foreign filings and prosecution to reduce the cost by more than 40%.
negotiated and drafted license and joint development agreements with U.S. and foreign partners
Established a set of standard agreements
2015-2017 - General Counsel
in addition to IP duties, advised Elevance on more general legal matters, including corporate governance
brought almost all general legal work in-house
2017-2018 - Counsel
continuing the same duties for Elevance, but on a part time basis
2018-Present - Hall Labs, LLC (halllabs.com)
Director of IP
Manage a team of patent attorneys and agents to build and maintain a portfolio of almost 1100 Patents and Applications for this “Modern Day Edison Lab.”
Advise companies created within the lab on patent strategies, including alignment of IP with business plan, FTO, IP due diligence.
Negotiate and draft various agreements, including Asset sales, IP licenses and joint development agreements.
Serve as a Director on the Executive Committee for Hall Labs.
Education
B.S. Chemistry - Brigham Young University
J.D. - The J. Reuben Clark Law School at Brigham Young University
Selected Publications
"Defining Prior Art after Patent Reform Are You Ready for the New 102?" Center for Intellectual Property Law News Source, Fall 2001, pp. 5-8 (Available at https://jmls.edu/academics/ip-privacy/pdf/ip-news-source.pdf)
"Are You Ready for Patent Reform?" C&I Magazine, Issue 21 (Nov.), 2011 (available at http://www.brinksgilson.com/files/chemistry_industry_duncan_nov_2011_a.pdf)
"A Comparison Between the Judicial and Administrative Routes to Enforce Intellectual Property Rights in China," 7 J. MARSHALL REV. INTELL. PROP. L. 529 (2008), with Michelle A. Sherwood, & Yuanlin Shen
"Dissecting Views of Judges on Written Description: Federal Circuit Includes 'Separatists,' 'Fusionists' and 'Clarificationists,'" The National Law Journal, Vol. 26, No. 87, June 13, 2005, with Meredith Addy and C. Noel Kaman
Professional Organizations
American Intellectual Property Law Association
Licensing Executives Society
Association of Corporate Counsel
The J. Reuben Clark Law Society