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IP Transactional Services and Due Diligence

Exploiting Patents
 
Our Intellectual Property attorneys have extensive experience in assisting clients to exploit their patent rights and related technology and know-how. These efforts have included negotiating and developing technology transfer arrangements for clients, such as joint ventures and technology development, collaboration and license agreements, both in the United States and abroad.

Exploiting Trademarks

We are experienced in working with clients to exploit trademark assets, especially through trademark licensing, franchising and securitization.

Exploiting Copyrights

Department attorneys have worked with clients to develop licensing arrangements designed to maximize the rights of copyright owners. This has included the filing of copyright registrations (as well as trademark registrations), samples and other materials with controlling agencies and authorities, including with the U.S. Customs Service to enable the Customs Service to identify and intercept infringing goods being imported into the United States.

Licensing Trade Secrets and Know-How

Our attorneys have extensive experience in negotiating and developing domestic and foreign technology development, license and transfer arrangements which make trade secrets and know-how available to the client or to others while maintaining sufficient prohibitions on disclosure to protect this form of intellectual property.

Joint Ventures

Our attorneys are involved in the negotiation and formation of collaborations and joint ventures in a variety of technical areas. This work is done for both foreign and domestic clients and includes technology transfer in a variety of countries and industries, which range from software design and development, to biotechnology and pharmaceutical diagnostics and therapeutics, among others. We work with other firm attorneys in areas of the law that can affect joint venture technology transfer arrangements, such as mergers and acquisitions, corporate formation and compliance, bankruptcy, and product liability.

Financing and Venture Capital

We are often called upon by underwriters, financial institutions and venture capital firms to conduct due diligence review of the intellectual property holdings of target entities and potential investments.  This includes not only consideration of the intellectual property held by the company, but also consideration of the merits of potential and existing claims against the company.  We also review and negotiate the agreements involved in such transactions.

License Agreements

Department members regularly provide domestic and international clients with legal advice and negotiation assistance in connection with all aspects of licensing arrangements. This can include providing: (1) analysis of patents (and relating technology and know-how) to assess validity, scope of protection and likelihood of infringement; (2) review of applicable domestic and international intellectual property, antitrust, tax, product liability, export control, bankruptcy, environmental, employment and other laws and regulations that could bear upon the performance or enforcement of a license agreement; and (3) the determination—in light of the law and the client's objectives—of such matters as what form of payment to use (e.g., upfront license fees and/or royalties of various types), whether a license should be exclusive or nonexclusive or confined to a single country or territory, and whether to permit manufacture, sale and sublicensing. Clients represented in licensing matters cover a broad array of properties and industries, including banking, auditing and financial services, biotechnology, pharmaceuticals and medical devices, cosmetic devices, software applications and website content and design, hydraulic and vehicle control systems, hotel management systems, and textiles and apparel.

Technology Transfers and Assignments

We frequently counsel clients in connection with the assignment, transfer or securitization of intellectual property rights. We assist clients with their due diligence investigation of the identity, ownership, validity and value of the properties to be transferred, and the drafting and filing of appropriate assignment and security agreements, including—where appropriate—representations, warranties and other safeguards designed to ensure the client's receipt of the full benefit of the contemplated intellectual property transfer. Department members are experienced in working with economists and appraisers to conduct the valuation of intellectual property and have been retained as expert consultants to the Internal Revenue Service in various intellectual property licensing and valuation matters.