Summary

In licensing and technology transfer the “IT” is about defining the deal and effectively monetizing intellectual property assets.  Our intellectual property attorneys have an international reputation in the area of licensing and technology transfer.  Our team has developed and administered sophisticated worldwide licensing programs involving patents, copyrights, trademarks, and trade secrets, and is regularly called upon to identify potential licensing targets that use the technology in question and to negotiate licensing and settlement agreements around the globe.  We also have significant experience negotiating and drafting licenses and settlement agreements arising out of infringement cases  in high technology, pharmaceutical, biotechnology and medical device areas, including litigation arising out of large scale licensing programs, as well as counseling clients on related antitrust and regulatory issues.

Due Diligence

Our attorneys are regularly retained at the outset of a potential deal to assist with the assessment of intellectual property rights being licensed out or being licensed in.  Our attorney roster includes former engineers and university researchers, a number of whom have Master’s Degrees and Ph.D.’s., with backgrounds in electrical engineering, mechanical engineering, chemical engineering, materials science, physics, chemistry, biochemsitry, genetics, microbiology, biology, biomedical sciences, and botany.  We capitalize on our depth of technical and legal knowledge to navigate large portfoilos and assess the strengths and weaknesses. 

Technology Transfer and Monetization

We understand that tech transfer offices and universities must balance basic research with the opportunity to partner with industry to monetize the innovations being created in their labs.  Because our attorneys have a unique combination of scientific, industry, and legal experience we are skilled at analyzing academic papers and disclosures while focusing on potential commercial products and licensing opportunities.  We are adept at analyzing an academic manuscript with a view toward potential commercial products and licensing opportunities, and to asking the right questions of inventors in order to identify the value propositions that may exist within an invention disclosure. Our team knows what it takes to work with both academic researchers and entrepreneurial licensees, while navigating university administrative requirements. We make it our mission to keep inventors and other stakeholders happy and informed, and to make it possible for licensing managers to focus on tasks other than the ones they have assigned to us.  We start by understanding each invention in great detail, and we work with academic researchers and licensing managers, as well as licensees, when applicable, to create a patent strategy that supports a commercialization strategy, including regularly counseling universities and tech transfer departments on Bayh-Dole Act related licensing issues.  We have also counseled clients on the transfer of intellectual property rights, providing direction on structuring IP auctions.

Emerging Businesses, Technology Transactions and Corporate Law

Sometimes entrepreneurial opportunities arise between a tech transfer office and a researcher seeking to start-up a company based on collaborative innovations. Our IP professionals work closely with HLP’s business and transactional lawyers to create a dynamic and experienced team, including a former CEO of a medical device start-up, with experience in clinical trials, management of relationships with regulatory professionals and relationships with domestic and international universities, academic medical centers, government laboratories and grant programs. We also have acted as primary outside counsel to a number of other start-ups, including the negotiation of international licensing and distribution relationships, and venture capital backed spinoffs. Our skillsets include:

  • Mergers and Acquisitions.
  • Debt and equity financings, including extensive venture capital and private equity experience. 
  • Employment agreements, stock option plans and other incentive compensation arrangements.
  • Domestic and international strategic alliances for both emerging growth companies and public companies.
  • International Licensing and distribution agreements.
  • Research and development agreements.