Marshall, Gerstein & Borun LLP

Representative Experience

• Creating proforma agreements from confidentiality agreements to master collaboration agreements.
• Counseling on intellectual property policies, related revenue-sharing agreements, consulting agreements, invention disclosure forms and compliance with non-profit grant funding.
• Managing out-licensing portfolios, including identifying potential targets and conducting intellectual property and agreement audits.
• Performing thorough due diligence of intellectual property assets in connection with licensing, assignment or the sale or merger of a business.
• Advising on dispute resolution strategies through settlement negotiations and agreements balancing competing interests.

Background and Credentials 

Again this year, Ms. Cox was named one of "The World’s Leading IP Patent and Technology Licensing Lawyers" by Intellectual Asset Magazine.  Ms. Cox was also recommended by her peers and selected again this year as a "Leading Lawyer" by Leading Lawyers Network, a division of Law Bulletin Publishing Company.

Before joining Marshall, Gerstein & Borun, Ms. Cox was a client of the Firm as the associate director of technology transfer for Indiana University’s Advanced Research and Technology Institute where one of her responsibilities was managing and licensing the eight campus patent portfolio.  For-profit and non-profit clients alike find she understands university technology transfer including best practices and applicable statutes and regulations.

Prior to Indiana University, Ms. Cox worked in regulatory affairs at DePuy Inc., now a Johnson & Johnson Company.  In addition to her responsibilities as a microbiology analyst, she drafted DePuy's standard operating procedures that supported ISO certification.  Her exposure to the regulatory process and sterilization guidelines for medical devices has proved a significant asset in counseling clients in the medical device industry.

Ms. Cox received her J.D. from the University of Notre Dame School of Law, holds a B.S. in biology with a concentration in microbiology from Indiana University and is admitted to practice law in the state of Illinois and before the United States Patent and Trademark Office.  She is a Certified Licensing Professional^TM (CLP), a credential issued by the Licensing Executives Society (LES) (USA and Canada), Inc. to recognize licensing professionals who are committed to professional development and the attainment of the skills and knowledge necessary to perform at the highest level of quality.*

*The Supreme Court of Illinois does not recognize certifications of specialties in the practice of law and the  CLP™  certification is not a requirement to practice law in Illinois.

Publications and speeches

Ms. Cox is an invited speaker and frequent author on licensing and intellectual property matters.  Recent examples include:

• "Mock Mediation: Time and Cost-effective Approaches to Resolving Technology Transfer Disputes" AUTM Annual Meeting, March 2012
• "Agreements Addressing the Coordination of Jointly Owned Intellectual Property Between Universities" AUTM Webinar, January 2012
• "Strategies for collaboration agreements focusing on innovation," Journal of Commercial Biotechnology, January 2012
• "Negotiations of License Agreements" AUTM Webinar, August 2011
• "Do You Consider Yourself a Good Negotiator?" AUTM Central Region Meeting, July 2011
• "Innovative Collaborations: Successful Deal Structures for Non-Profit/For-Profit Collaborations" BIO Annual Meeting, June 2011
• "Drafting the License Agreement: No Decoder Ring Required" AUTM Annual Meeting, March 2011
• "Negotiating the License Agreement: What to Consider Before, During and After the Negotiation" AUTM Annual Meeting, February 2011
• "PDS 100: Commercializing Technology Through the Power of IP Licensing" LES PDS series, October 2010
• "Negotiating the License Agreement" AUTM Webinar, August 2010
• "Anatomy of a License Agreement" AUTM Webinar, July 2010
• "The Bayh-Dole Act - Principles and Practice" June 2010
• "Primer on Intellectual Property and Technology Transfer" Intellectual Property/Entrepreneurship Symposium, April 2010
• "Drafting the License Agreement - Let the Financial Terms be Your Guide" AUTM Annual Meeting, March 2010
• "Drafting Agreements in the Biotechnology and Pharmaceutical Industries" - Oxford University Press, March 2010 (Mark Anderson ed.)
• "The Use of Master Research Agreements in Non-Profit Technology Transfer" - Corporate Liaison Network, March 2010
• "Game-Changing IP Strategy and Organizational Alignment That Lead to the Right Deal Pipeline" - LES IP 100 Executive Forum, February 2010
• "Doing Well By Doing Right - The Ultimate Reason for Engaging in Ethically Motivated Deal-Making" - LES USA & Canada Annual Meeting, October 2009
• "Term Sheets: The Deal Begins" - LES PDS 300 CLE Series, 2009 LES USA & Canada Annual Meeting
• "How Does Your License Agreement Address Timely Issues?" - Intellectual Asset Management, March/April 2009
• "Analyze This Contract!" - AUTM Annual Meeting, February 2009
• "Legal Issues Affecting Deals in the Life Sciences" - IP Litigator, November/December 2008

Community and Professional Involvement

• International Delegate of the Licensing Executives Society (LES), former Chair of the LES Chicago Chapter, frequent speaker and active member in LES and LESI
• Pro-bono attorney and former guardian ad litem for Chicago Volunteer Legal Services
• Editor, Technology Transfer Manual Task Force for the Association of University Technology Managers (AUTM), frequent speaker, author and active member in AUTM
• Chair of Firm’s IP Transactions practice, member of the Firm's Strategic Planning Committee, former Chair and current member of the Firm’s Marketing Committee, advisor to the Diversity and Professional Development Committees, and actively mentoring associates through the Firm’s formal mentoring program 
• Co-founder and former subcommittee chair of the licensing committee of the Intellectual Property Owners Association (IPO)
• Illinois State Bar Association (ISBA)
• American Bar Association (ABA)
• Women In Bio (WIB)
• University Club of Chicago

Short Biography