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IP LICENSING AND TRANSACTIONS

Maximize the value of your intellectual property.

We provide expertise in licensing of all types of intellectual property assets, including patents and technology, trademarks and corporate brands, and portfolios of copyrighted material. We employ a systematic, comprehensive approach to commercializing intellectual property for our clients. In licensing negotiations, we work to minimize client risk while maximizing intellectual property value over the long term.

Comprehensive IP Commercialization

Our IP Licensing and Transactions Services

Patent and technology licenses

Agreements that grant the right to make, use, or sell a product under a patent license in which the patent owner receives royalty payments on sales of the product.

Software Licenses

Agreements that specify the terms of use for software applications and the rights of the software copyright owner and the end-user.

Trademark Licenses

Agreements in which trademark owners permit others to use a trademark in connection with specific products or services.

Business Development Agreements

Joint development, commercialization, and manufacturing agreements.

Intellectual property divestments and acquisitions

Agreements transferring ownership of IP rights as part of merger or acquisition transactions.

Strategic alliances and joint ventures

Agreements defining the IP rights of parties in joint venture arrangements.

CAPITALIZE ON YOUR INTELLECTUAL PROPERTY

The IP expertise you need for your technology transaction

Intellectual Property Transfers

One common method for transferring intellectual property rights from one party to another is through an “assignment” of those rights. An assignment is a transfer of rights between a transferring party (the “assignor”) to a receiving party (the “assignee”). In an assignment, all of the rights held by the assignor are given to the assignee. Assignments are used to convey all types of intellectual property, including patents, trademarks, copyrights, trade secrets, etc. In fact, many forms of intellectual property can (and often are) conveyed in the same assignment document.

Attending to the Details

Assignments of intellectual property often have very specific requirements that must be met to make them valid. For example, the assignment document often must include key language or provisions to ensure that the assignment is valid. Additionally, it may be necessary to publicly record the assignment before it is valid with respect to third parties. This may be an issue if two competing parties assert ownership of the same IP that was acquired by assignment. Our firm regularly prepares and records assignments for various types of intellectual property and can assist you with addressing these and other IP transfer issues.

Licensing Expertise

Likewise, various complex legal requirements must be attended to in the licensing of intellectual property. Our firm regularly negotiates and prepares license agreements for various types of intellectual property. While every license agreement has basic requirements to be valid, our practice is to suit the license to the needs and circumstances.

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