Practice Areas
Clean Technology, Life Sciences, Mechanical, Medical Devices, Software, Trademarks & Copyrights, TransactionsIndustry & Technical Focus
Biotechnology, Pharmaceutical, Software, Hardware, Communications, Publishing, Entertainment
Practice Description
Mr. Monachino has over 14 years of experience and leads the firm’s intellectual property transaction practice. He has a unique understanding of the risks and rewards associated with each contract, and has played a key role in a variety of transactions involving development, protection, licensing, marketing, transfer and distribution of intellectual property rights and resulting products and services. Ben’s extensive experience encompasses worldwide industries, such as biotechnology and life sciences, software and hardware, communications, Internet and e-commerce, manufacturing, publishing, and entertainment. He has worked on deals involving hospital and university tech transfer, research, and sponsored research, patent and technology licensing, and product development with major multinational corporations; medical device licensing, development, and acquisition; and software licensing. Overall, Ben provides a complete understanding of the business and technical aspects of a transaction.
Notable Experience
- Participating in the due diligence, documentation, and integration phases of a $325 million acquisition of an antibody company by a multinational pharmaceutical company.
- Representing the licensee with respect to the preparation and negotiation of a license agreement for the worldwide development and commercialization of a monoclonal antibody product, at the time in a Phase 2b study for the prevention of re-infection by the Hepatitis B virus in liver transplant patients, a market then estimated to be about $100 million worldwide.
- Representing a clinical functional genomics company with respect to an agreement with the Genome Institute of Singapore (GIS) and the Agency for Science, Technology & Research to build a DNA and tissue sample repository for the Government of Singapore in an effort to advance the country’s genomic initiative in support of biomedical research needs for Singapore.
- Participating in the deal team representing the buyer in a $430 million purchase of a Major League Baseball team.
- Representing a polymer-based drug delivery company with respect to a licensing agreement (including manufacturing and distribution components) with Wyeth Consumer Healthcare, granting Wyeth the North American rights to develop and market an OTC product.
- Preparing a sponsorship and intellectual property agreement (relating to exogenous cell and tissue growth technology) between a research and development biotechnology company focused on tissue engineering and a major university.
- Representing the global leader in grand-format printers with respect to its major sales, distribution, and development transactions, until the company was acquired for $281 million.
- Representing a leader in radiology and medical image and information management software solutions (which provide a complete, end-to-end solution for imaging centers, ambulatory care facilities, and radiology practices) with respect to its customer and enterprise licensing activities until the company was acquired for $55 million (including incentives for attainment of certain earnings targets). At that time, Ben participated in the deal team, handling the intellectual property aspects of the acquisition.
- Representing a biomass to fuel conversion technology company with respect to a license agreement with one of Japan’s largest corporations involved in the environmental, chemicals and food industries, for a territory that includes Japan, Thailand, Malaysia and Indonesia. This deal resulted in the world’s first commercial plant to produce cellulosic ethanol from wood construction waste.
Prior Experience
Prior to joining Lahive, Ben was in the Commercial Technology Group at a global law firm with more than 1,000 attorneys.
Publications & Speaking Engagements
- Author, "Confidentiality Agreements – When “Standard” Is Not So Standard," March 2010
- Author and Speaker on intellectual property law topics ranging from licensing to the transfer and distribution of IP rights.
