IP Transactions and Licensing

Our clients understand that innovation, to become a valuable asset, must be tactfully and carefully developed and commercialized.  Our IP attorneys have experience drafting and negotiating a wide range of business transactions involving intellectual property rights, including:

  • Acquisition and Divestment of IP Rights and Technology;
  • Mergers and Acquisitions;
  • Business Unit and Product Divestitures;
  • Strategic Alliances and Cross-Licenses;
  • Joint Development Agreements, Joint Ventures, Collaboration Agreements;
  • Complex Procurement Agreements;
  • E-business and digital commerce transactions, including website development and hosting agreements, co-branding and linking agreements, business-to-business marketplaces, and exchange transactions;
  • Employment and independent contractor agreements.

 

Our IP transactional practice builds upon the firm’s traditional corporate services by adding decades of experience about how intellectual property rights can make or break a business deal.  We help our clients design and close transactions that will effectively leverage their IP assets, including patent, trademark and technology licenses (i.e., in, out and cross-licenses), co-branding agreements, private label agreements, and value-added reseller and distribution agreements.  Our attorneys serve as general counsel for many clients, advising them on legal issues encountered in everyday business operations.

Representative IP Transactions

  • Licensing of custom software to large institutional licensees;
  • Sale of trademarks as part of the sale of a business;
  • Review of IP assets and preparation of data rooms containing detailed and comprehensive information about opinions about IP assets, from trade secrets and know-how to registered trademarks and issued patents;
  • Recording the assignment, transfer, and security interests in intellectual property assets with the U.S. Patent and Trademark Office (USPTO), the U.S. Copyright Office, and with various State recording offices under the Uniform Commercial Code (UCC).

 


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