TaeSoo Sean Kim is a partner in Ice Miller’s Business Group. His practice encompasses a wide range of commercial transactions for both established and emerging bio-pharmaceutical, digital health and technology companies, as well as leading academic and research institutions. Sean drafts and negotiates intellectual property licenses, joint development, collaboration and strategic alliance agreements for platform technologies, drug delivery systems and therapeutic candidates. He also advises clients on technology licenses, including software license and service agreements, content license agreements, and master services agreements. As part of his broader corporate practice, Sean also works closely with Korea-based clients doing business in United States on vital cross-border transactional matters, including corporate formation and financing, real estate investments and joint venture agreements.
An active member of the startup community in New York and Los Angeles, Sean has served as a board member of Korean Startups and Entrepreneurs, a non-profit organization with over 1,000 members in New York, Los Angeles and S. Korea. He currently serves as an outside general counsel to startups in various stages of growth, from pre-funding to multiple venture capital financing.
Selected Experience
LICENSING TRANSACTIONS
Drafted and negotiated a broad range of collaboration, licensing, co-development and option agreements for pharmaceutical, biotechnology, medical devices, and technology clients, including:
- Represented global clinical-stage biopharmaceutical company in drafting and negotiating a research collaboration agreement with a leading research institution to co-develop novel oncologic drugs, including bispecific antibodies and CAR-T cell products.
- Represented a clinical-stage gene therapy company in licensing and commercial transactions with academic and industry partners on its adeno-associated viral (AAV) vector technologies, including drafting and negotiating sponsored research agreements, material transfer agreements, and license and option agreements.
- Represented a Harvard University spin-off biotechnology company. in negotiating an option and license agreement with a global pharmaceutical company to develop and commercialize tumor necrosis factor (TNF) receptor 2 antagonist antibodies.
- Represented a gene therapy contract manufacturing and therapeutics development company in various license and commercial transactions involving adeno-associated viral (AAV) vector process.
- Represented a major Korean Pharmaceutical company on cross-border license agreement, including drafting and negotiating supply agreements and renegotiating an out-licensing deal totaling more than $2 billion in potential deal value.
- Represented a Korea-based biopharmaceutical company on negotiating a collaboration and license agreement with a San Francisco-based artificial intelligence (AI) drug discovery company.
- Represented a clinical stage biopharmaceutical company in drafting and negotiating a license to drug delivery technologies from a large biopharmaceutical company.
- Represented a Singapore-based clinical stage biotechnology company in drafting and negotiating a development services agreement with a leading biotechnology platform company for monoclonal antibody treatment for COVID-19.
- Represented MIT-spin off biotechnology company in negotiating a collaboration and license agreement with a leading Chinese pharmaceutical company to develop rare disease therapeutics.
- Represented a MEMS sensor and sensing solution company in drafting and negotiating a license and collaboration agreement with a leading national research institution to develop a new sensor technology.
- Negotiated licenses, sponsored research agreements, material transfer agreements, and options with leading academic and research institutions, including MIT, Harvard, Boston University, and Draper Laboratory.
GENERAL CORPORATE
Drafted and negotiated a broad range of corporate transactions for established and emerging growth companies as well as traditional asset management firms, including:
- Represented more than a dozen Korea-based biotechnology and technology startups and entrepreneurs in corporation formation, venture capital financing, and various corporate transactions.
- Represented a leading Korea-based asset management company in multiple mezzanine loan financing transactions for development projects in New York and Texas.
- Represented a publicly-traded Korea-based semiconductor company in acquiring a commercial property in Silicon Valley to be used for research and development complex in US.
- Represented a publicly-traded German life sciences company and its US subsidiaries in numerous M&A transactions.
- Represented publicly traded SaaS company in its acquisition of a professional networking organization.
- Represented a major U.S. bank in setting up a credit facility for a publicly-traded pharmaceutical company.
Speaking Engagements
- Moderator, “Leveraging Big Data, Artificial Intelligence, and Patents for Business Growth,” Korea Society, November 2020
- Speaker, “Intellectual Property Strategies,” LA BioStart Legal Basics Program, February 2019
- Speaker, “Digital Health IP considerations,” Multi-CLE program in Los Angeles, January 2019
- Moderator, “Raising VC Funding for Life Sciences Startups,” Biotech Connection Los Angeles, November 2018
- Speaker, “Legal Considerations for Startups,” GRID 110 Incubator, December 2016
- Moderator, “Global Patent Strategies,” International Association of Korean Lawyers (IAKL) Conference, October 2016
- Speaker, “Startup Law 101: Incorporation, Fundraising, and IP Strategy for Startups,” Korean Startup Summit NYC, June 2016
- Speaker, “U.S. Venture Capital and Legal Considerations for Startups,” Samsung Startup Incubator, December 2015
- Speaker, “Technology Commercialization for Korean Universities,” U.S. Technology Roadshow, November 2015
- Speaker, "Business Organization and Intellectual Property Strategy for Startups," Korean Startup Showcase NYC, April 2015
- Speaker, "Intellectual Property in M&A and Venture Capital," Global K-Startup Business Program, November 2014
- Panelist, "Corporate and Intellectual Property Law," Harvard Law School, November 2014
- Moderator, "International Career Advice and Experience," International Association of Korean Lawyers (IAKL) Conference, October 2014
- Speaker, "Intellectual Property Strategy for Startups," Korean Startups and Entrepreneurs (KSE), July 2014
- Moderator, "Intellectual Property in Films," WIPO World IP Day, Benjamin N. Cardozo School of Law, April 2014
- Moderator, "The America Invents Act and Its Impact on Patent Litigation and Prosecution," Benjamin N. Cardozo School of Law, April 2014
- Speaker, "Understanding Intellectual Property Rights," CMP Business Outreach Center, November 2013
- Moderator, "Traditional Intellectual Property Protection in the U.S.," 2013 Korea Trade-Investment Promotion Agency (KOTRA) Intellectual Property & Business Strategy Forum, June 2013
- Moderator, "Intellectual Property as a Business Asset and Strategy," Benjamin N. Cardozo School of Law, March 2013
- Moderator, "Korea-US FTA and Its Impact on Intellectual Property," New York City Bar Association, February 2013