Michel “Mike” Morency, Ph.D.

Registered Patent Attorney, Boston, MA

Overview

Dr. Morency has over 25 years of legal practice with general corporate law firms, primarily in the life science industry. He holds a B.Sc. in Life Sciences, a Ph.D. in Medical Science – Neuroscience, and a J.D. in Common Law, providing him with a very strong educational background to represent life science companies. He has represented every segment of the life science industry, from early stage companies to large multi-national biopharmaceutical companies, as well as universities, and non-profit research organizations.

Dr. Morency advises clients on the creation and development of cost-effective, strategic intellectual property (IP) portfolios. He also provides counseling to life science companies in patent interference, post-grant reviews, intellectual property enforcement, and litigation issues, as well as preparing patent invalidity, freedom to operate and non-infringement opinions. His legal experience encompasses numerous technologies such as neurobiology, stem cell and transgenic technologies, immunology, and vaccine technologies, novel antibiotics, anti-viral therapeutics, cancer therapeutics, tissue and organ regeneration, blood cells and blood products, drug delivery, drug discovery, gene therapy, genomics, proteomics, nanotechnologies, antioxidants, nutraceuticals and dietary supplement technologies, and medical devices.

Given Dr. Morency’s educational and research background in neuroscience, a significant portion of his experience encompasses a wide variety of neuroscience-related technologies including:

  • technology platform for the effective delivery of therapeutic and diagnostic agents to the central nervous system, including normal and pathological areas of the brain, cerebellum, spinal cord and nerve roots and ganglia;
  • small molecules and chemotherapeutics for the treatment of glial-derived tumors including astrocytomas, glioblastoma multiforme, brain stem gliomas, ependymomas, oligodendrogliomas, optic nerve gliomas, and oligo-astrocytomas;
  • small molecules for the treatment of numerous neurodegenerative and neurological disorders including epilepsy, Parkinson’s disease, neurogenic orthostatic hypotension, neuropathic pain, schizophrenia, stroke, traumatic brain injury, Alzheimer’s disease, cerebral ischemia, amyotrophic lateral sclerosis, Huntington’s disease, sensorineural hearing loss, tinnitus, glaucoma, neurological damage caused by epileptic seizures or by neurotoxin poisoning, depressive disorders, trauma- and stressor-related disorders, bipolar disorders with depressive features, anxiety disorders, and obsessive-compulsive and related disorders.
  • small molecules, antibody agents, oligonucleotides, and nucleic acid-based agents such as siRNA, RNAi, miRNA, dsRNA, to induce neurogenesis;
  • gene therapy for the treatment of Tay-Sachs, Canavan, Sandhoff, GM1 and related diseases;
  • improved access port device system for intrathecal delivery of therapeutic and diagnostic agents;
  • improved recording and stimulating electrodes for deep brain stimulation;
  • spinal cord implant systems;
  • devices and algorithms for a tracking task to quantify Parkinsonian motor symptoms on short timescales;
  • non-invasive method for presymptomatic and symptomatic diagnosis of Alzheimer’s disease.
  • method of bioluminescence-driven optogenetic control of excitable cells for the treatment of Parkinson’s disease, epilepsy, sleep disorder, or a sensory-related disease or condition (eg., attention deficit disorder or pain); and
  • method of labeling a neuronal cellular circuit in a neuronal cell.

He has represented neuroscience clients in every segment of the life science industry, from early stage companies to large multi-national Fortune 500 pharmaceutical companies, as well as universities, and non-profit research organizations.

In addition to the creation and management of IP portfolios and related counseling, Dr. Morency has extensive experience in the commercialization of IP, including the negotiation and drafting of transactional agreements for the transfer of intellectual property rights, such as IP licenses, material transfer agreements, strategic collaborations, mergers and acquisitions, as well as conducting due diligence related to various financings and transactions. This extensive experience representing large biopharmaceutical companies, investors, and underwriters provides Dr. Morency with a unique insight on creating IP portfolios that meet and exceeds the industry expectations, which enhances the technology’s valuation.

Education

  • University of Ottawa, J.D, cum laude
  • McMaster University, Ph.D in Medical Science – Neuroscience
  • Queen’s University, B.Sc., with honors, in Life Sciences

Admissions

  • Massachusetts
  • U.S. Patent and Trademark Office
Representative Matters
  • Advising life science companies on the creation and development of patent portfolios, collaborative research, licensing of technology, raising money through venture capital and other financial transactions, and enforcement of their intellectual property rights.
  • Advising university technology licensing offices on assessing industry interest in their technologies and the strength of intellectual property covering the same in order to direct resources towards technologies with greater commercialization potential.  
  • Negotiating and drafting numerous option agreements, licensing agreements, sponsored research agreements, cooperative research agreements on behalf of life science companies acquiring intellectual property rights from universities and non-profit research organizations. 
  • Providing patent invalidity, freedom to operate and non-infringement opinions
  • Counseling life science companies in patent interference, post-grant reviews, intellectual property enforcement, and litigation issues.
  • Performing due diligence investigations for private and public financings and M&A transactions.
  • Negotiating and drafting various transactional agreements for life science companies including manufacturing and supply agreements, licensing agreements, distribution agreements, material transfer agreements, clinical trial agreements, confidentiality agreements, consulting agreements, and various services agreements.

Representative Transactions and Financings

Mergers & Acquisitions (M&A)

  • Represented a privately-held specialty pharmaceutical company in an acquisition by a publicly-traded NASDAQ pharmaceutical company for $125 million USD plus milestones.
  • Represented a privately-held biomedical cancer therapeutic company in an acquisition/asset purchase by a publicly-traded NASDAQ biotech company for $55.3 million USD.
  • Represented a publicly-traded NASDAQ biopharmaceutical company focused on rare pediatric and orphan diseases, in an acquisition of another publicly-traded NASDAQ biopharmaceutical company in an all-stock transaction valued at over $15 million USD, plus contingent value rights CVRs for up to an additional $6.5 million USD in subsequent payments. 
  • Represented a private, pre-clinical medical technology company in the sale of its royalty rights to a major institutional investor for $8 million USD.
  • Represented a publicly-traded NASDAQ regenerative medicine company in the merger with two privately-held biotech companies to form a new publicly-traded NASDAQ regenerative medicine company.

Strategic Collaborations / Licensing

  • Represented a privately-held biomedical diagnostic company in a multi-year, worldwide Distribution Agreement with a Fortune 500 healthcare company.
  • Represented a publicly-traded NASDAQ genomics company in a Collaboration Agreement with a Fortune 500 pharmaceutical company worth over $1.5 billion USD.
  • Represented a privately-held biotech regenerative medicine company in an Exclusive Licensing Agreement with a Fortune 500 pharmaceutical company worth over $125 million USD, with $15 million USD upon signing.
  • Represented a subsidiary of a publicly-traded TYO pharmaceutical company in a Sponsored Research Agreement and an Exclusive License Agreement with an American university. 
  • Represented a privately-held drug delivery company in an Exclusive License Agreement with a non-profit research hospital. 
  • Represented a privately-held oncology company in a multi-year Cooperative Research and Development Agreement (CRADA) with the National Cancer Institute. 

Initial Public Offerings (IPOs) / Fiancings

  • Represented a privately-held specialty pharmaceutical company in an IPO on NASDAQ for $70 million USD.
  • Represented the underwriters in the IPO of a privately-held molecular diagnostic company on NASDAQ for $82.5 million USD.
  • Represented the underwriters in the IPO of a privately-held biotechnology company on TSX for $42.4 million CDN, representing the largest Life Sciences IPO in Canada at the time. 
  • Represented a publicly-traded NASDAQ biopharmaceutical company in a bond deal priced at $150 million USD. 

 

Seminars / Publications

Seminars:

  • Guest lecturer, Biotechnology Graduate Course entitled “The Importance of Intellectual Property in Biotechnology.” Brown University, Fall 2016, 2017, 2018, and 2019.
  • Moderator, presentation entitled, “Legal and Business Strategies for Early-Stage Med Tech.” MedMates 2nd Annual Life Sciences Expo, April 2018.
  • Moderator, Life Science Program entitled “The current state of life science startups in Southern New England.” Southern New England Entrepreneurs Forum (SNEEF), September 2018.
  • Invited Speaker, presentation entitled, “MassChallenge Case Study: Top IP Mistakes Made by Early Stage Technology Companies.” MassChallenge Competition 2013, 2014, and 2015.
  • Organizer and Moderator, presentation entitled, “Getting the Most from Your IP Budget: Strategies for IP Portfolio Management and Litigation Avoidance.” Foley’s Executive Briefing Series, Boston, Massachusetts, September 2009.
  • Invited Speaker, presentation entitled, “Intellectual Property Strategies for Emerging Technology Companies.” MIT Entrepreneurs Luncheon Series, Massachusetts Institute of Technology, Cambridge, MA, June 2006, 2007, and 2008.
  • Invited Speaker, presentation entitled, “Intellectual Property Strategies for the Protection of Unique Food Products.” Foley’s Quarterly Food Industry Web Conference Series, October 2007.
  • Invited Speaker, presentation entitled, “From Idea to Effort to Operating Entity – An Entrepreneur’s Guide.” Babson Entrepreneurship Program, Babson College, Babson Park, MA, May 2007, 2008, and 2009.
  • Invited Speaker, presentation entitled, “The Current Regulatory Environment and Its Impact on Partnering.” Advanced Pharma and Biotech IP Licensing – Creating the Winning Deal, Newport, NJ, October 2004.

Publications:

  • Morency M. and Prince J.T., “Driving Revenue and Deal Flow Through an Intelligent IP Strategy: Strategies for Smaller and Early-Stage Life Science Companies.  Part I: Creation of the Intellectual Property.”  It’s Your Business – The AP&S Business Law Blog; JD Supra Legal News; and FlipBoard.com, June 16, 2020.
  • Ewing J.F., Flores M., and Morency M., “How to Respond to a Cease and Desist Letter.” NutraingredientUSA.com, February 2008.
  • Morency M. and Ewing J.F., “Patently wise: What, how and where to patent.” NutraingredientUSA.com, October 2007.
  • Ewing J.F. and Morency M., “Preparing for impending USPTO rule changes.” NutraingredientUSA.com, January 2007.
  • Ewing J.F. and Morency M., “Preparing for a new round of impending US patent and trademark rule changes.” Mass High Tech, September 2006.
  • Ewing J.F., Morency M., and Mollman Elliott S., “Keeping trade secrets under wrap.” NutraIngredients-USA.com, August 2006.
  • Ewing J.F. and Morency M., “Preparing for a business transaction.” NutraIngredients-USA.com, June 2006.
  • Ewing J.F. and Morency M., “Preserving intellectual property before a patent is issued,” FoodNavigator-USA.com, May 17, 2006.
  • Ewing J.F. and Morency M., “Nutraceuticals and functional foods require governance, present opportunity,” Mass High Tech, October 3, 2005.
  • Ewing, J.F.,  Garvey J.M., and Morency M, “Knowledge generation, integration key in drug development strategies,” Mass High Tech, July 6, 2004.
  • Garvey J.M. and Morency M., “Rational Decisions: Rational-drug-design firms are now under patent scrutiny. But this is a good thing.” Bio IT World, June 17, 2004.
  • Garvey J.M. and Morency M., “Computationally-Guided Rational Drug Design: The Biotech Industry’s Rational Progression for New Drug Development,” Financier Worldwide / Biotechnology Sector Review, June 2004, pp. 23-24.
  • Garvey J.M. and Morency M., “Well-written IP strategy puts startups on roadmap for development,” Mass High Tech, April 5, 2004.
  • Morency M.,  Ewing J.F., Pham C., and Garvey J.M., “Patent strategy can bring collaboration revenues,” Mass High Tech, February 2, 2004.
  • Morency M., Ewing J.F., and Garvey J.M., “Traps for the unwary,” Mass High Tech, October 13, 2003.
  • Garvey J.M., Ewing J.F., and Morency M., “How to get licensees to help you monitor the market for infringers,” PatentWorld, October 13, 2003.

Patent Inventorship:

  • WO 2020/102516 – Access Port System with Self-Adjusting Catheter Length. Inventors:  Calias P. and Morency M.

Scientific Publications:

  • Morency M., Quirion R., and Mishra R.K., Distribution of cholecystokinin receptors in the bovine brain: A quantitative autoradiographic study. Neuroscience, 1994 Sep; 62(1): 307-317.
  • Srivastava L.K., Morency M., and Mishra R.K., Ontogeny of dopamine D2 receptor mRNA in rat brain. European Journal of Pharmacology, 1992 Feb 13; 225(2): 143-150.
  • Morency M., Quirion R., Nair N.P., and Mishra R.K., Localization of cholecystokinin binding sites in canine brain using quantitative autoradiography. Progress in Neuropsychopharmacology & Biological Psychiatry, 1991; 15(2): 291-296.
  • Srivastava L.K., Morency M., Bajwa S.B., and Mishra R.K., Effect of haloperidol on expression of dopamine D2 receptor mRNAs in rat brain. Journal of Molecular Neuroscience,1990; 2(3): 155-161.
  • Morency M. and Mishra R.K., Cholecystokinin (CCK) receptors. In: Peptide Hormone Receptors, (M. Kalimi and M.H. Hubbard, eds). Walter de Gruyter, Berlin/New York, 1987 pp. 385-436.
  • Morency M., Ross G.M., Hesketh D., and Mishra R.K., Effects of unilateral intracerebroventricular microinjections of cholecystokinin (CCK) on circling behavior of rats. Peptides, 1987 Nov-Dec; 8(6): 989-995.
  • Morency M., Stewart R.J., and Beninger R.J., Circling behavior following unilateral microinjections of cocaine into the medial prefrontal cortex: dopaminergic or local anesthetic effect? Journal of Neuroscience, 1987 Mar; 7(3): 812-818.
  • Beninger R.J., Cheng M., Hahn B.L., Hoffman D.C., Mazurski E.J., Morency M., Ramm P., and Stewart R.J., Effects of extinction, pimozide, SCH 23390, and metoclopramide on food-rewarded operant responding of rats. Psychopharmacology (Berlin), 1987; 92(3): 343-349.
  • Morency M. and Beninger R.J., Dopaminergic substrates of cocaine-induced place conditioning. Brain Research, 1986; 399(1): 33-41.
  • Stewart R.J., Morency M., and Beninger R.J., Differential effects of intrafrontocortical microinjections of dopamine agonists and antagonists on circling behavior of rats. Behavioral Brain Research, 1985; 17(1): 67-72.
  • Morency M., Stewart R.J., and Beninger R.J., Effects of unilateral microinjections of sulpiride into the medial prefrontal cortex on circling behavior of rats. Progress in Neuropsychopharmacology & Biological Psychiatry, 1985; 9(5-6): 735-738.
Honors
  • Selected as a Massachusetts Super Lawyers four consecutive years.
  • Over 20 scholarships, awards, and academic prizes, including a Licensing Executive Society (LES) Fellowship; a Medical Research Council (MRC) Studentship (ranked first overall in the national competition); and a Natural Sciences & Engineering Research Council Postgraduate Scholarship.
In the Community

Mentor, Judge for MassChallenge                    2010 – Present  

MassChallenge (http://masschallenge.org/) is the world’s largest accelerator program and startup competition. They strengthen and accelerate entrepreneurs by providing them high-quality, personalized mentorship and by connecting them to potential team members, advisors, customers and sponsors.

Mentor for North Shore InnoVentures                2010 – Present  

North Shore InnoVentures® (http://nsiv.org/) is a nonprofit technology business incubator committed to:

  • Accelerating the growth of innovative startups in the cleantech and biotech sectors (two of the strongest technology clusters in Massachusetts) and
  • Supporting the economic development on the North Shore by successfully launching new companies and creating high-quality, sustainable jobs.

 

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