Making the most of technology goes well beyond choosing a software program, a piece of hardware or an outsourcing partner. Our Technology Transactions and Licensing team assists clients with utilizing technology to achieve business objectives and leverage assets to help them become more productive and innovative.

With our broad industry experience and deep understanding of legal and technology issues, we strive to help clients understand the opportunities and ramifications of their technology decisions. We work with clients at every phase of the technology life cycle, from innovation to phase-out, and from system selection through implementation and ongoing support. We develop and execute legal solutions that help clients preserve their flexibility, while protecting their rights and property.

By combining our capabilities in technology, patents, trademarks, copyrights and trade secrets with the support of lawyers in other areas, such as mergers and acquisitions, tax, litigation and antitrust, we help our clients develop integrated, cross-disciplinary approaches to domestic and international:

  • Development and Distribution
  • Inbound Licensing
  • Outbound Licensing
  • Strategic Alliances and Joint Ventures
  • Research and Development
  • University Research and Technology Transfer
  • IP Asset Acquisitions and Equity Investments
Technology Transactions and Licensing

Development and Distribution

Our lawyers assist clients in evaluating and negotiating the necessary arrangements to enable third parties to develop, manufacture and distribute products, content and services utilizing our clients’ intellectual property, both domestically and internationally. Whether developing content in-house, licensing third party content to build out a new product offering or service line, or partnering with third parties for joint development, we focus on the transactional details necessary to ensure that the project is completed and risks are mitigated. When clients outsource development or manufacturing, we work with them to impose the appropriate quality controls to ensure performance and implement appropriate restrictions and procedures to make certain that the applicable technology, content or trade secrets are not misused.

We work with clients involved with distribution channels to develop the necessary arrangements, whether they fall into one or more established categories, such as co-branding or private labeling arrangements, sales representative agreements, value-added resellers, integrators, wholesalers and retailers, or entirely new categories. We help clients develop and document the appropriate payment terms, marketing obligations, quality controls, exclusivity provisions and other key terms necessary to support distribution efforts.

Inbound Licensing

Because the cost of developing new technologies, content or branded properties is significant and market acceptance is a challenge, companies frequently license properties from third parties to build upon existing technology or brand equity. We counsel clients in negotiations with licensors large and small, including international pharmaceutical companies, Far East electronics companies, niche think tanks, movie and television studios, sports leagues and others. To close these deals, we develop structures that satisfy all parties using our experience with the inherent flexibilities of intellectual property rights and secure those rights necessary to support the short- and long-term goals of our clients.

Outbound Licensing

Companies that have developed innovative technologies, valuable content or recognizable brands often seek to maximize the return on their investment by leveraging their existing intellectual property into new fields of use or distribution channels.  Doing so may require diversion from core business efforts or the ability to tap hard-to-reach resources or customers. We work with clients to identify potential partners that can leverage pre-existing intellectual property while enhancing the revenue opportunities and goodwill of the clients.

Strategic Alliances and Joint Ventures

Companies may look to partner with competitors, complementary companies or start-ups to accelerate technology development.  These transactions are often more sensitive than standard vendor-customer relationships because the parties must address the relative contributions, development obligations, ownership rights, distribution rights and competitive issues. Our attorneys have represented companies from a variety of industries in negotiating joint development and distribution agreements between equals, as well as between big companies and start-ups and/or universities.

Research and Development

For in-house development, we advise clients on the necessary employment agreements and policies to ensure that intellectual property is company owned, as well as suggest processes for encouraging and evaluating development. When cooperating with third parties, we work with clients to balance factors such as pre-existing intellectual property rights, entitlement to future developments, control over registration and enforcement, and drawing lines between fields of use.

University Research and Technology Transfer

Our lawyers work with academic institutions in the development, licensing and commercialization of university technology. We have represented both universities and industry in the negotiation and administration of sponsored projects and research grants and in technology licensing. We assist universities with the commercialization of technology in a variety of contexts, which includes portfolio management, licensing to third parties for further development and commercialization, formation of joint ventures and the establishment and financing of early stage companies based on university-licensed technology. We have also worked with academic institutions to assemble a full set of legal services to address the recurring legal needs of emerging ventures founded by faculty.

IP Asset Acquisitions and Equity Investments

Our transactional IP lawyers work closely with lawyers in our Corporate Practice to ensure that mergers, acquisitions and joint ventures appropriately protect clients’ intellectual property and strategic plans. We regularly work with our clients to evaluate pre-existing agreements and implement strategies to renegotiate critical terms, both pre-and post-closing, where necessary. In joint venture transactions, we similarly help craft appropriate intellectual property provisions, license and royalty terms, and marketing and distribution obligations. We also represent investment firms and venture capitalists in connection with the acquisition of interests in companies with complex intellectual property rights.

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