Related Practices

Admitted to Practice

California
U.S. Patent and Trademark Office

Dale C. Hunt, PhD

Partner

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Los Angeles

T213.633.8623

F213.633.6899

San Francisco

T415.276.6583

F415.276.6599

Dale Hunt has extensive experience in patents and intellectual property transactions, focusing on patent protection involving biotechnology, environmental technology, medical devices, pharmaceuticals and related industries, as well as U.S. and foreign plant patents and plant-variety rights. He also has experience in patent portfolio management and strategy advice, international intellectual property matters, right-to-practice and product-launch opinions, investor due diligence and licensing.

Dale's technical emphasis is in biotechnology (cellular biology, genetics, genomics, immunology, molecular biology, pharmaceuticals and protein engineering); clean technology and environmental technology (clean and alternative energies, natural products and water purification systems); materials (filters and filtration systems, fibers and alloys); medical devices and procedures (nucleic acid diagnostics, sensors and instrumentation, surgical devices and methods); and plants (agriculture, genetics, plant patents and plant-variety protection).

Dale's clients include: Cincinnati Children's Hospital, Fall Creek Farm & Nursery, Hourglass Coffee, iGlyko, MannKind Corp., Manoa Biosciences, Mountain View Pharmaceuticals, Novum Energy Technology, Sylvan Source, Synergenz Bioscience, TyraTech, University of Georgia, and University of Hawaii.

Representative Experience

Patent services for cleantech company

Providing intellectual property advice relating to licensing, due diligence and patent opinions for a company involved in developing natural pesticides. Additionally, we have handled patent prosecution for its receptor technologies, functional foods and sustainable agriculture.

Patent services for cleantech company

Handling patent prosecution for an energy technology company whose technology aids in eliminating corrosion within facilities that process high amounts of sulfur and natural gas. We also assist this client in obtaining patents for technology that reduces corrosion in pipelines.

Patent services for cleantech company

Handling patent prosecution and portfolio development relating to a publicly traded client's large-scale production of biodiesel, natural oils and biomass resources from algae and aquatic plants.

IP transactions – IP aspects of IPO for biotechnology company

Built patent portfolio and international patenting strategy for startup biotechnology company. Advised on and assisted with numerous out-licenses of technology to establish value long before any possible product launch. Worked with underwriters and their counsel to address all issues in detailed investor diligence relating to IP. IPO resulted in initial company valuation in excess of $200 million.

IP transactions – mixed purchase and license of database system and support contract

Initially advised in limited role as to IP aspects of transaction between a leading U.S. software company and a U.S. Native-American casino resort client. With increasing complexity and difficulty of deal, became centrally involved in negotiating all aspects of license and services agreement, leading team of lawyers representing client and negotiating with lawyers representing multiple parties involved in the transaction. Ultimately achieved favorable terms for client, much improved over starting position, with additional beneficial concessions offered by licensor and service provider. Deal terms included approximately $3 million in royalties and services.

IP transactions – patent license and joint product development

Advised on intellectual property aspects and assisted in negotiation of a long-term licensing partnership between an early-stage client and a major multinational company, in which the two multinationals will develop functional foods and nutraceuticals for treatment and prevention of adverse human health conditions in developing countries. Addressed and resolved IP diligence issues raised by counsel for licensee. Deal terms included $5 million in milestone payments, ongoing patent royalties and other mutual benefits.

IP transactions – patent license, joint venture, international regulatory clearance, product commercialization

Led team of lawyers in structuring a multinational technology transaction between a medical diagnostics company and a major Indian conglomerate, establishing a relationship governing product-development, regulatory clearance, and commercialization of diagnostics products and services in India and surrounding countries. Deal terms included $7 million in milestone payments, ongoing patent royalties and other mutual benefits.

IP transactions – patent portfolio acquisition from university licensor

Conducted negotiations and concluded transaction in connection with an initial public offering of shares in a client company, in which patent portfolio had been licensed to client by a major U.S. university. Despite traditional resistance by university to assignment of patent rights, successfully negotiated mutually beneficial terms with appropriate assurances and fallbacks to permit licensor university to break new ground in institutional culture regarding handling of IP rights. Conversion of IP rights from license to assignment added value in IPO.

IP Transactions – renegotiation of license terms with university licensor

Reviewed and successfully rebutted an opinion of counsel provided to client’s university licensor. Opinion addressed scope of option agreement, reaching a conclusion highly unfavorable to client. Assembled team of attorneys to review every legal and factual aspect of opinion and, within 24 hours of receipt of opinion, provided rebuttal letter with detailed technical evidence and legal basis for client’s position. University conceded shortly thereafter and agreed to clarify and redefine scope of rights in final license agreement with terms favorable to client. Persuasive analysis resulted in enhanced confidence in client by investors and other partners, and further favorable dealings with licensor.

Patent and licensing services – biotechnology and pharmaceutical clients

Advised startup biotechnology client from shortly after first patent filing to development of large and complex international patent portfolio. Worked with client in preparing for IPO and continuing to establish dominant patent position in its field. Negotiated allowance of numerous important patents via frequent in-person interviews with patent examiners at the U.S. Patent and Trademark Office. Worked with other pharmaceutical clients in preparing platform applications to meet requirements for milestone payments from licensees; prosecuted applications for these clients to grant in U.S. and many foreign countries. Provided opinions addressing issues of non-infringement and/or invalidity of third-party patents. Active in ongoing patent prosecution throughout the world on behalf of biotechnology and pharmaceutical clients.

Patent and licensing services – university and institutional clients

Provide ongoing patent services to various university and institutional clients in areas of medical and genetic diagnostics, therapeutic small molecules, immunology, transgenic animals, plant varieties, alternative energies, and sustainable agriculture. Manage international portfolio, prosecute important patents to grant, and assist in negotiations with university licensees.

Patent, licensing, diligence and opinion services – cleantech and natural-products clients

Developed patent strategies and built portfolios for clients in cleantech, solar energy, biodiesel, natural pesticides, climate change, and water purification. Developed positive working relationship with patent examiners and negotiated allowance of complex and aggressive patent claims. Advised regarding competition and business opportunities as they relate to patent strategy and enforceability, and with respect to third-party rights and avoiding risks arising therefrom. Advised regarding investor diligence and positioning of IP portfolio to optimize business opportunities. Provided opinions in connection with anticipated or active litigation. Active in ongoing IP strategy and business advice, as well as ongoing patent prosecution throughout the world.

Professional Recognition

Invited Lecturer, Patent Opinion Writing, ACI Seminar
Invited Lecturer, Business Courses, Licensing Executive Society
Advocacy Commendation; Outstanding Graduate Student Instructor – UC Berkeley (Boalt Hall) School of Law
Spencer W. Kimball Scholar, Brigham Young University
United States Presidential Scholar