Outside Intellectual Property Counsel for In-House Legal Teams
Torrey Pines Law Group serves as outside patent and intellectual property counsel to general counsel, heads of IP and chief financial officers at established technology and life sciences companies. We manage patent portfolios worldwide, render freedom-to-operate and validity opinions, run intellectual property due diligence on both sides of a transaction, and negotiate the intellectual property terms of licenses and collaborations. Where a product is regulated, our FDA regulatory advisors work on the same matter.
Key Facts
- Founded in San Diego in 2013; offices in San Diego, Los Angeles, Irvine, Palo Alto and Boston.
- Patent attorneys, patent agents and patent engineers with degrees in biochemistry, organic chemistry, electrical engineering, computer science and mechanical engineering.
- Practices: patent preparation and prosecution, IP opinions, IP due diligence, technology transactions and FDA regulatory.
- Technologies: artificial intelligence, software, semiconductors, biotechnology, pharmaceuticals, medical devices and in vitro diagnostics.
- Foreign filings through a vetted network of foreign associates; members of the firm have handled matters in more than thirty countries.
- Recognized in the Chambers California Spotlight Guide for Intellectual Property in 2025 and 2026.
What In-House Teams Ask Us to Do
- Run the patent portfolio. Invention disclosure review, preparation and prosecution in the United States and abroad, and regular portfolio reviews that tie filing and abandonment decisions to the products the company actually sells.
- Take over a portfolio from prior counsel. File transfer, docket reconciliation, new powers of attorney and foreign associate instructions, handled so that no deadline falls between two firms.
- Clear a product before launch. Freedom-to-operate, validity and non-infringement opinions, written to be relied upon by a board, an acquirer or a court.
- Conduct diligence. Intellectual property due diligence for acquisitions, in-licenses, financings and public offerings, and preparation of the company's own portfolio for a buyer's review.
- Negotiate the intellectual property terms. Licenses, collaborations, supply and development agreements, and other technology transactions.
- Coordinate patents with the regulatory path. Pharmaceutical lifecycle management, Orange Book listing strategy and FDA regulatory advice on the same matter team as the patent work.
- Add capacity. Overflow prosecution in a technology the current firm does not cover, or a second opinion on a matter that warrants one.
How We Work With In-House Counsel
Our founder, Kevin Buckley, served on the executive management teams of two artificial intelligence companies and a biopharmaceutical company, where he hired and managed outside law firms and regulatory consultants. The firm is organized around what he wanted from outside counsel when he was the client.
- One responsible attorney. Each client has a senior attorney who knows the portfolio and the business, and who answers the telephone.
- A technical match. Applications are drafted by a practitioner trained in the technology, and reviewed by an attorney before filing.
- Predictable cost. We work on fixed-fee, hourly and hybrid arrangements and, in certain circumstances, for equity. We set fixed fees for defined prosecution tasks, agree annual portfolio budgets, and give estimates before opinion and diligence work begins.
- Reporting that suits a legal department. Docket reports, portfolio status reports, and budget-to-actual reports delivered on your schedule.
- The same team abroad. We instruct and supervise foreign associates directly, so the company has one point of contact for every jurisdiction.
Representative Work
- Led a team of intellectual property, corporate and tax attorneys in due diligence and deal consultation for a nine-figure Fortune 500 pharmaceutical acquisition.
- Obtained patent protection for Guardant Health on bioinformatics platform technologies, in one of the most difficult art units of the U.S. Patent and Trademark Office.
- Built the patent portfolio that underpinned the initial public offering of Galera Therapeutics.
- Built the early patent portfolio of Isto Technologies, later acquired by Zimmer.
- Obtained the early patent protection of Singulex, whose portfolio was acquired by Millipore.
- Extended the patent term of multiple active pharmaceutical ingredients through lifecycle management strategies, including Orange Book listable patents.
- Reviewed and prepared the intellectual property and clinical regulatory disclosures in Forms 10-K, 10-Q and 8-K and in S-1 registration statements.
More examples appear under Recent Successes, Public Companies and Multinational Companies.
What Chambers® Says
Chambers and Partners describes the firm as having a “strong patent practice with an impressive client list featuring standout names in technology, biotechnology, AI and pharmaceuticals.” Source: Chambers California Spotlight Guide.
