IP Licensing and Transactions

For multinational corporations developing new processes and tools – as well as entrepreneurial inventors seeking to maximize the value of their innovations – we start with the same questions:

How are you going to make some money out of this?
How much of your technology should you license? And, what should remain exclusive to your company to protect the future of your business? An important part of our job is to help you distinguish core technology (which should remain yours alone) from collateral technology (which should be exploited for all it’s worth).

What is the best way to exploit your invention?
Should you retain the technology and make and market a product yourself? Or outsource manufacture or marketing? Or license the technology to others who will make and market products from it? The answers are different for each product and company. We know that from experience helping innovators find the most profitable ways to market their technologies-and from negotiating valuable licensing agreements or manufacturing or marketing agreements.

Mergers and IP investments
We often represent clients who are acquiring or licensing a portfolio of patents or buying/merging with a company that owns a patent portfolio that will be part of the transaction. Our due diligence answers critical questions such as: Do the patents actually exist? What do they cover? Have they been transferred properly? Have the rights been assigned? And has the transaction been recorded? Only with answers to those questions can you be sure of the value of what you’re buying. Our experience in scrutinizing proposed technology transactions is the reason we are consulted as expert witnesses on issues of reasonable royalties and licensing values.

Licensing Services

  •  negotiating strategic alliances
  • drafting distribution agreements
  • creating joint research agreements
  • advising on IP-related standards issues
  •  counseling on litigation settlements
  • IP due diligence on mergers & acquisitions
  • advising on antitrust aspects of IP
  • enforcement and escape strategies
  • arbitrating or mediating IP disputes

 


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