As a result, Todd has experience in constructing patent portfolios that capture a client’s patent asset acquisition goals from in vitro results to clinical trials to commercialization, and has honed his skills in crafting and developing US and global strategic patent portfolios, with an eye to licensing, acquisition, merger, financing, collaboration, and/or partnering deals.   

“I have worked with clients from their start-up days up through their multi-billion dollar acquisition by big pharma. I have listened to, and internalized, the needs of their scientific, legal, and business teams. This helps me understand where a client’s research is likely to head, and just as importantly, where it isn’t. These conversations and experiences shape my recommendations regarding key patent filings and third party landscape analysis.” 

Todd’s experience in IP due diligence support in transactional settings—including successful financing rounds and IPOs, as well as his experience in post-grant proceedings such as ex parte reexamination before the US Patent and Trademark Office and oppositions before the European Patent Office—has underscored to him the importance of a solidly drafted application that supports claims of varying scope.

“If I had one piece of advice to give regarding patent drafting, it is this: do not neglect the intermediates. There is almost always a gap in the application between the hoped-for broadest claim and the claims covering the narrowest embodiments. The unexpected should be expected in prosecution, such as unforeseen art cited by the examiner. Multiple, layered positions of intermediate scope can fill this gap. It can expand options for carving around unforeseen art, while still blocking design-around options from competitors.”

Through close collaboration and input from the client, Todd has led efforts to search, analyze, and assess the patent landscape around products of interest.

“It can be just as important for a start-up company to have a sense of the potential third party obstacles they may need to navigate as it is to have patent applications on file to capture their foundational inventions. Potential investors expect to see that companies have an awareness of any freedom to operate issues, and a strategy in place to minimize risk.”

Todd also acts as local counsel for ex-US law firms and their clients. In this capacity, he ensures office actions are reported with sensitivity to the client's needs, and works in close concert with the instructing associate to address issues particular to the US to ensure the best possible result. 

Todd’s areas of technical expertise encompass small molecule pharmaceuticals, antisense oligonucleotides, antibodies/ADCs, imaging probes, drug delivery and formulations, biocompatible 3D printing, chemical catalysts, and vaccines.