Pamela L. Cox concentrates on counseling related to intellectual property transactions, protection and transfer for clients ranging from multinational corporations to non-profit institutions.  As a patent attorney who has managed intellectual property portfolios in-house, Ms. Cox understands her clients’ intellectual property and agreement needs, and remains passionately engaged until achieving their strategic objectives.  Clients find her talented at unraveling complex deal structures and devising creative agreement solutions as a seamless member of their team.

"Pamela Cox is one of the foremost licensing experts both in the Midwest and nationally.  She is a pre-eminent authority on university technology transfer and licensing acting for commercial and non-profit clients." – IAM Patent 1000

Case Studies and Client Successes

  • For more a decade, represented MonoSol, LLC in its intellectual property litigation, prosecution and transactional matters, including in its recent acquisition by Kuraray Holdings U.S.A., Inc.
  • Led the negotiations for NUtech Ventures in their collaboration license and germplasm transfer agreement with Bayer CropScience AG that focuses on wheat improvement, makes provision for an endowed professorship at the University of Nebraska-Lincoln, support for UNL research and education programs, support for UNL's first Presidential chair named for the Nebraska Wheat Growers, and plans for Bayer to establish its first North American wheat-breeding station near Lincoln. 
  • Manage the Firm’s IP services to Northwestern University for the patent portfolio of Chad Mirkin’s laboratory, who is the most-cited chemist in the world and nanomedicine researcher in the world. Led the Northwestern University team in negotiating portfolio license agreements under these patent portfolios to AuraSense LLC, Nanosphere Inc. and NanoInk Inc. 
  • Developed, restructured, interpreted and advised Scott & White Healthcare, one of the nation's largest multi-center healthcare systems, on numerous university, institute, foundation and hospital intellectual property policies, drawing on the Firm’s depth of understanding of prosecution and litigation matters related to inventorship, ownership and non-profit technology transfer.
  • Represent Orion Genomics in their multi-year collaboration on the Oil Palm Genome with the Malaysian Palm Oil Board.  The results of this collaboration are an essential step toward improved production of food, feed and fuel in this important crop.
  • Represented Loyola University of Chicago when its ownership was unsuccessfully challenged by MediGene AG and negotiated Loyola's current license with GlaxoSmithKline who now manufactures and sells Cervarix® (Human papillomavirus bivalent vaccine, recombinant). 
  • Structure and negotiate agreements to out-license Chinese hamster EF-1 alpha regulatory DNA (CHEF1) intellectual and tangible property for CMC ICOS Biologics, Inc. through evolving business models over the life-cycle of the more than a dozen issued patents around the world.

Detailed Biography

Representative Experience

  • Advising on IP dispute resolution strategies through settlement negotiations and agreements balancing competing interests.
  • Leading negotiations and persuading others with sensitivity to relationship dynamics and the internal/external politics of the parties.
  • Drafting IP-centric agreements such as licenses and collaboration and alliance agreements, where the value of the collaboration is to create and exploit the intellectual property.
  • Creating proforma agreements from master collaboration agreements to confidentiality 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.

Background and Credentials 

Ms. Cox is one of nine "highly recommended" for licensing in the U.S. and for several years has been named one of "The World’s Leading IP Patent and Technology Licensing Lawyers" by Intellectual Asset Management.  Ms. Cox is also recommended by her peers 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.  Ms. Cox was also in-house in regulatory and clinical affairs at DePuy Inc., now a Johnson & Johnson Company.  For-profit and non-profit clients alike find she understands university technology transfer including best practices and applicable statutes and regulations.

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 (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 a frequent speaker and author on licensing and intellectual property matters.  Recent examples include:

  • "Innovative Structures for Successful University/Industry Collaboration: What Works, What Doesn’t & What Could?" AUTM Leadership Forum, November 2012
  • "Terms to Consider in Global Pharmaceutical Agreements from a Licensee’s Perspective," CLE Presentation, June 2012
  • "Drafting Agreements in the Biotechnology and Pharmaceutical Industries," Oxford University Press, May 2012
  • "Reaching Across the Table" Nature Biotechnology, May 2012
  • "The Art and Science of Negotiation: Technology Transfer Negotiations," AUTM Technology Transfer Practice Manual, Third Edition (pp. 12-23), March 2012
  • "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
  • "Stanford v. Roche and the Practical Considerations Therefrom," CLE Course, August 2011
  • "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

Community and Professional Involvement

  • Licensing Executives Society International (LESI) Life Sciences Committee Chair, International Delegate for LES USA-Canada, former Chair of the LES USA/Canada Chicago Chapter
  • Pro-bono attorney for the Thisbe and Noah Scott Foundation and the Aparecio Foundation
  • Former guardian ad litem for Chicago Volunteer Legal Services
  • Editor, Technology Transfer Manual Task Force for the Association of University Technology Managers (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 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)
  • Member of the Illinois State Bar Association (ISBA)
  • Member of the American Bar Association (ABA)
  • Member of the Women In BIO (WIB)
  • Member of the University Club of Chicago
  • Life Fellow of the American Bar Foundation

Short Biography

Education

  • University of Notre Dame Law School, J.D.
  • Indiana University, Bloomington, B.S., Biology

Practices

Industries

Admissions

  • Illinois
  • U.S. Patent and Trademark Office
  • U.S. District Court, Northern District of Illinois

Publications

Memberships

  • Association of University Technology Managers (AUTM)

  • Licensing Executives Society (LES)

  • Intellectual Property Owners Association (IPO)

  • Illinois State Bar Association (ISBA)

  • American Bar Association (ABA)

  • Women In Bio (WIB)

  • University Club of Chicago

News

Events

Pamela L. Cox

Partner

Pamela L. Cox concentrates on counseling related to intellectual property transactions, protection and transfer for clients ranging from multinational corporations to non-profit institutions.  As a patent attorney who has managed intellectual property portfolios in-house, Ms. Cox understands her clients’ intellectual property and agreement needs, and remains passionately engaged until achieving their strategic objectives.  Clients find her talented at unraveling complex deal structures and devising creative agreement solutions as a seamless member of their team.

"Pamela Cox is one of the foremost licensing experts both in the Midwest and nationally.  She is a pre-eminent authority on university technology transfer and licensing acting for commercial and non-profit clients." – IAM Patent 1000

  • T.312.423.3451
  • F.312.474.0448

Pamela L. Cox

Pamela L. Cox

Case Studies and Client Successes

  • For more a decade, represented MonoSol, LLC in its intellectual property litigation, prosecution and transactional matters, including in its recent acquisition by Kuraray Holdings U.S.A., Inc.
  • Led the negotiations for NUtech Ventures in their collaboration license and germplasm transfer agreement with Bayer CropScience AG that focuses on wheat improvement, makes provision for an endowed professorship at the University of Nebraska-Lincoln, support for UNL research and education programs, support for UNL's first Presidential chair named for the Nebraska Wheat Growers, and plans for Bayer to establish its first North American wheat-breeding station near Lincoln. 
  • Manage the Firm’s IP services to Northwestern University for the patent portfolio of Chad Mirkin’s laboratory, who is the most-cited chemist in the world and nanomedicine researcher in the world. Led the Northwestern University team in negotiating portfolio license agreements under these patent portfolios to AuraSense LLC, Nanosphere Inc. and NanoInk Inc. 
  • Developed, restructured, interpreted and advised Scott & White Healthcare, one of the nation's largest multi-center healthcare systems, on numerous university, institute, foundation and hospital intellectual property policies, drawing on the Firm’s depth of understanding of prosecution and litigation matters related to inventorship, ownership and non-profit technology transfer.
  • Represent Orion Genomics in their multi-year collaboration on the Oil Palm Genome with the Malaysian Palm Oil Board.  The results of this collaboration are an essential step toward improved production of food, feed and fuel in this important crop.
  • Represented Loyola University of Chicago when its ownership was unsuccessfully challenged by MediGene AG and negotiated Loyola's current license with GlaxoSmithKline who now manufactures and sells Cervarix® (Human papillomavirus bivalent vaccine, recombinant). 
  • Structure and negotiate agreements to out-license Chinese hamster EF-1 alpha regulatory DNA (CHEF1) intellectual and tangible property for CMC ICOS Biologics, Inc. through evolving business models over the life-cycle of the more than a dozen issued patents around the world.

Detailed Biography

Representative Experience

  • Advising on IP dispute resolution strategies through settlement negotiations and agreements balancing competing interests.
  • Leading negotiations and persuading others with sensitivity to relationship dynamics and the internal/external politics of the parties.
  • Drafting IP-centric agreements such as licenses and collaboration and alliance agreements, where the value of the collaboration is to create and exploit the intellectual property.
  • Creating proforma agreements from master collaboration agreements to confidentiality 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.

Background and Credentials 

Ms. Cox is one of nine "highly recommended" for licensing in the U.S. and for several years has been named one of "The World’s Leading IP Patent and Technology Licensing Lawyers" by Intellectual Asset Management.  Ms. Cox is also recommended by her peers 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.  Ms. Cox was also in-house in regulatory and clinical affairs at DePuy Inc., now a Johnson & Johnson Company.  For-profit and non-profit clients alike find she understands university technology transfer including best practices and applicable statutes and regulations.

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 (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 a frequent speaker and author on licensing and intellectual property matters.  Recent examples include:

  • "Innovative Structures for Successful University/Industry Collaboration: What Works, What Doesn’t & What Could?" AUTM Leadership Forum, November 2012
  • "Terms to Consider in Global Pharmaceutical Agreements from a Licensee’s Perspective," CLE Presentation, June 2012
  • "Drafting Agreements in the Biotechnology and Pharmaceutical Industries," Oxford University Press, May 2012
  • "Reaching Across the Table" Nature Biotechnology, May 2012
  • "The Art and Science of Negotiation: Technology Transfer Negotiations," AUTM Technology Transfer Practice Manual, Third Edition (pp. 12-23), March 2012
  • "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
  • "Stanford v. Roche and the Practical Considerations Therefrom," CLE Course, August 2011
  • "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

Community and Professional Involvement

  • Licensing Executives Society International (LESI) Life Sciences Committee Chair, International Delegate for LES USA-Canada, former Chair of the LES USA/Canada Chicago Chapter
  • Pro-bono attorney for the Thisbe and Noah Scott Foundation and the Aparecio Foundation
  • Former guardian ad litem for Chicago Volunteer Legal Services
  • Editor, Technology Transfer Manual Task Force for the Association of University Technology Managers (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 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)
  • Member of the Illinois State Bar Association (ISBA)
  • Member of the American Bar Association (ABA)
  • Member of the Women In BIO (WIB)
  • Member of the University Club of Chicago
  • Life Fellow of the American Bar Foundation

Short Biography

Pamela L. Cox

Education

  • University of Notre Dame Law School, J.D.
  • Indiana University, Bloomington, B.S., Biology

Practices

Industries

Admissions

  • Illinois
  • U.S. Patent and Trademark Office
  • U.S. District Court, Northern District of Illinois

Publications

Memberships

  • Association of University Technology Managers (AUTM)

  • Licensing Executives Society (LES)

  • Intellectual Property Owners Association (IPO)

  • Illinois State Bar Association (ISBA)

  • American Bar Association (ABA)

  • Women In Bio (WIB)

  • University Club of Chicago

News

Events

©2013 Marshall, Gerstein & Borun LLP