Timothy J. Oyer, PhD
Shareholder
| Chemical & Materials Technologies
Overview
Tim Oyer counsels clients on IP matters within or relating to sustainability, chemistry, materials, and life sciences. He is based in Boston and spends some of his time working out of the firm's New York office. After serving as President and Managing Partner of the firm from 2007 to 2021, he has returned to the practice of law full time.
On the technical side, his teams serve clients that most often operate at the interface of chemistry and another area of science or engineering, such as pharmaceutical drug discovery, energy, sensors, medical devices, biotech, polymers, nanotechnology, and chemistry/materials-related sustainability such as recycling and energy. These clients appreciate that some of the most exciting things happen at those intersections, where chemistry is a relevant or key aspect.
Tim’s legal practice encompasses worldwide intellectual property counseling, including patent prosecution, reissues, opinions, oppositions, trademarks, trade secrets, IP due diligence, agreements, and related transactions.
Tim counsels clients in industry and academia, from venture-backed high-tech companies building domestic and international intellectual property portfolios to larger companies with mature product streams. Tim also serves venture capital firms in evaluating the IP position of companies that are the target of potential investment and companies in building or tuning an IP strategy and/or structure to exceed the expectations of VC and other investors.
In every case, Tim seeks first and foremost to understand a client’s short-term and long-term business vision and to align IP strategy accordingly. He understands a company’s strategy can change, and considers it an imperative part of his service to clients to regularly reassess and adjust IP strategy to match the client’s trajectory.
Tim credits long hours at work from a young age, in jobs involving direct customer service and working with hands, for giving him insights into how things and people work—critical aspects of the delivery of IP services. He was given “total immersion” experience living abroad a number of times as a child and young adult, sometimes in impoverished nations, which he credits with fostering a drive for empathy, essential to success in business. After college, Tim spent a year doing research at the Harvard School of Public Health, then completed his PhD at MIT. He has industrial chemical research experience, and he has authored several publications in both the chemical and legal fields.
Experience
- For many years, have counseled several major universities on patent strategies and portfolio development as well as identifying dominating and potentially interfering subject matter for use in licensing negotiations.
- For a start-up diagnostics company, provided strategic advice regarding IP development, positioning portfolios, and negotiating with partners, resulting in client’s ascent into dominant position in its field.
- For a client in the rechargeable battery industry, developed multi-faceted approach for dealing with competitor with potentially troubling patent application, emerging with better-than-expected results.
- Frequent advisor to venture capital firms and other investors on IP strengths and risks associated with start-up companies in which they may invest.
- Evaluated complex patent portfolios and developed strategies to best position start-up clients in world-wide coordinated efforts.
Activities
- American Bar Association
- American Chemical Society
- American Intellectual Property Law Association
- Association of University Technology Managers (AUTM)
- Boston Bar Association - Past co-chair, Intellectual Property Committee
- Boston Intellectual Property Law Association
- Licensing Executives Society (LES), Past chair, Nanotechnology Committee
- MIT Alumni Association
- MIT Corporation, Visiting Committee for Department of Chemistry
- Sigma Xi
Recognition
- Repeatedly named to The Best Lawyers in America®
- Repeatedly recognized in the IAM Patent 1000: The World’s Leading Patent Professionals
- Repeatedly named a “Life Science Star” by LMG Life Sciences
- Repeatedly named to the list of Massachusetts Super Lawyers in the field of intellectual property law