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 country’s leading licensing authorities. Nobody works harder than [this] thoroughly commercial lawyer who can quickly get her head around even the most labyrinthine deals. She quickly comes to your rescue with practical guidance in very tight timeframes and is an indispensable ongoing resource who can navigate worldwide negotiations with ease. She is [also] a pre-eminent authority on university technology transfer and licensing acting for commercial and non-profit clients." – IAM Patent 1000
“Pam has an exceptional legal mind. She is able to grasp and parse complex legal issues independently, yet with great sensitivity about keeping the client informed. She’s an outstanding negotiator and is able to take a strong position without being disagreeable. She plans ahead for expected compromises downstream, and finds creative solutions to apparent impasses.” – Client Quote (LMG Life Sciences)
Ms. Cox was honored in 2016 by Licensing Executives Society International (LESI) with the President’s Award for Individual Service, recognizing her outstanding years of leadership and service as Chair of the LESI Life Sciences Committee. She is "highly recommended" for licensing and honored as one of "The World’s Leading IP Patent and Technology Licensing Lawyers" by Intellectual Asset Management. Ms. Cox is recognized as a "Life Sciences Star" by LMG Life Sciences and a Woman Worth Watching in Profiles in Diversity Journal. Ms. Cox was once again selected to Managing IP’s IP Stars list of the Top 250 Women in IP, and honored to again be named an "IP Star" in the IP Stars Survey (fka the World IP Handbook and Survey). She is named a Rainmaker by the Minority Corporate Counsel Association (MCCA), is honored to be again recommended by her peers as a "Leading Lawyer" by Leading Lawyers Network, a division of Law Bulletin Publishing Company, recognized by The Best Lawyers in America© in the practice area of Biotechnology Law, and on the Illinois Super Lawyers® list in which only five percent of the lawyers in the state are recognized each year.
- Leading negotiations and persuading others with sensitivity to relationship dynamics and the internal/external politics of the parties.
- Advising on IP dispute resolution strategies through settlement negotiations and agreements balancing competing interests. 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.
- Performing thorough due diligence of intellectual property assets in connection with licensing, assignment or the sale or merger of a business.
- 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.
Case Studies and Client Successes
- Marshall Gerstein’s IP Transactions practice represented a multinational health care company in its acquisition of a private U.S. biopharmaceutical company. The acquisition marked the first time a company has acquired a drug candidate developed with resources from NIH's National Center for Advancing Translational Sciences (NCATS) Therapeutics for Rare and Neglected Diseases (TRND) programs. As an advisor particularly for issues of intellectual property under federal acquisition and Bayh-Dole regulations and in conducting due diligence, this unique transaction required the deal team to negotiate and optimize across a broad range of issues including government contracting, licensing and patenting.
- Ms. Cox represents Orion Genomics and its affiliates in their intellectual property transactions including a suite of agreements for a collaboration on the oil palm genome between Orion and the Malaysian Palm Oil Board (MPOB), a body corporate established under the Malaysian Palm Oil Board Act 1998. Palm oil is 45% of the world’s edible oil. The collaboration resulted in amazing scientific advancements like identifying the gene responsible for oil palm production.
- Diagnovus, LLC, since acquired by Aegis Sciences Corporation, launched ENGAUGE™-cancer--DLBCL assay, the first of a comprehensive line of molecular diagnostic tests for less frequent diseases. The assay, invented at Stanford University School of Medicine by Dr. Ron Levy, is based on more than 10 years of research, exceeds the standard clinical characteristics that clinicians have used for prognosis for the last three decades, and can now be routinely performed in a reproducible and accurate manner. Marshall, Gerstein & Borun negotiated the license from Stanford on behalf of Diagnovus, and other related agreements supportive of this product line.
- For a decade, Marshall, Gerstein & Borun has represented MonoSol, LLC in all its intellectual property litigation, prosecution and transactional matters, including in its acquisition by Kuraray Holdings U.S.A., Inc. Ms. Cox is the primary portfolio manager and advises on day-to-day IP operations.
- Ms. Cox manages the Firm’s IP services for Northwestern University, including the patent estate from Professor Chad Mirkin’s laboratory, the most-cited chemist and nanomedicine researcher in the world, and the out-licensing of the estate.
- For eight years Ms. Cox has developed, restructured, interpreted and advised Scott & White Healthcare, now Baylor Scott & White Health, one of the nation's largest multi-center healthcare systems, on policy issues and licensing, drawing on her depth of understanding of intellectual property management in the health care environment and physician consulting relationships.
- Ms. Cox was part of the Marshall Gerstein team that represented Loyola University of Chicago when its ownership of patent rights was unsuccessfully challenged by MediGene AG and negotiated Loyola's out-license with GlaxoSmithKline who now manufactures and sells Cervarix® (Human papillomavirus bivalent vaccine, recombinant), which protects against Type 16 and Type 18 of the HPV virus that causes 70% of cervical cancers.
- Partnering first with ICOS Corporation, now CMC ICOS, Ms. Cox continues to advise on Chinese hamster EF-1 alpha regulatory DNA (CHEF1) intellectual and tangible property for evolving business models over the life-cycle of the dozens of issued patents prosecuted by Marshall Gerstein’s biotech group.
Background and Credentials
Ms. Cox is a Certified Licensing Professional (CLP), a credential that recognizes 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.*
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. There, she was responsible for managing and licensing the eight campus patent portfolio. Ms. Cox was also in-house in regulatory and clinical affairs at DePuy Inc., a Johnson & Johnson Company.
*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.
- University of Notre Dame Law School (J.D.)
- Indiana University, Bloomington (B.S.)
- U.S. District Court, Northern District of Illinois
- U.S. Patent and Trademark Office
Publications and Presentations
Ms. Cox is a frequent speaker and author on licensing and intellectual property matters. Recent examples include:
- “Mock Mediation of a Patent and Trade Secret License Dispute," LES Scandinavia Annual Conference, September 2016.
“Life Sciences Royalty Rate & Deal Survey Workshop," LES University, July 2016.
- "IP Considerations for Applicants," UC CAI Application Webinar Series, November 2015.
- "Challenges in Negotiating Global License Agreements: U.S. v. European Jurisdictions," LES Annual Meeting, October 2015.
- "Where is My Crystal Ball When I Need It? Good Deals Gone Bad: A Case Study in Structuring License Agreements to Survive the Convulsions of Commerce," MRUN CATTEC VIII: Midwest Startups – Evolution of Innovation, October 2015.
Click here to see additional Publications and Presentations.
Community and Professional Involvement
- Board of Governors and Secretary of the Certified Licensing Professionals (CLP)
- Licensing Executives Society International (LESI) Life Science Advisory Board founder and liaison for LESI Life Science Committee, former Chair of LESI Life Science Committee
- International Delegate for LES USA-Canada and former Chair of the LES USA/Canada Chicago Chapter
- Business Development Curriculum Committee discharging the Association of University Technology Managers (AUTM)'s grant from the Coulter Foundation, and served on the AUTM Nominations and Awards Committee
- Adjunct Professor of Law in the Master of Science in Law (MSL) program at Northwestern University Law School, Inaugural Year 2014-2015 and 2016-2017
- 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)
- Pro-bono attorney for the Thisbe and Noah Scott Foundation and the Aparecio Foundation
- Former guardian ad litem for Chicago Volunteer Legal Services
- Judge, Northwestern University's Venture Challenge (NUVC)
- Member and Presenter at American Intellectual Property Law Association (AIPLA)
- Member of the Women In Bio (WIB)
- Life Fellow of the American Bar Foundation (ABF)
- Member of the Illinois State Bar Association (ISBA)
- Member of the American Bar Association (ABA)
- Member of the University Club of Chicago
- Member and presenter at the Association for Corporate Growth (ACG)