Licensing

Technology transfer can be a critical function for many technology-based companies. A company may license rights to the core technology upon which it built its business or through which it expands into new technology. It may convert non-core patents in its portfolio into income-generating assets by licensing rights to others. Licensing can provide for a successful resolution of infringement and other IP-related disputes or serve as an inducement to others to legitimize their use of overlooked or ignored client-owned patents.

Hamilton Brook Smith Reynolds has extensive experience in all aspects of licensing and other technology transfer transactions. To meet the individual needs of clients in as efficient a manner as possible, the firm tailors its role on a case-by-case basis. Services run the gamut from providing consultation on a single intellectual property-related aspect of a larger transaction to participating as a full member of the team that handles the transaction from the initial nondisclosure agreement and letter of intent through the negotiation, drafting, and execution of the final documentation.

The firm's approach in this area provides clients with sophisticated, cost-effective counseling. Because all of our attorneys have technical backgrounds in the involved technologies, they anticipate problems that may arise during the negotiation and drafting process as the contemplated relationships develop. In addition, the attorneys in the firm who focus on licensing and other technology transfer work have experience in litigation, including litigation over license disputes. They are thereby able to provide clients with added perspective during the negotiation process.

  • Counseled a start-up biomedical and diagnostic company in negotiating a license to platform technology.
  • Counseled a start-up biologics company in a licensing agreement with a major university covering a joint research project and associated development of intellectual property rights.
  • Prepared combined software-hardware use license with service agreements for a corporate maker of chemical and bio-tech manufacturing process equipment and components.
  • Counseled a major computer industry corporation on use of open source software components and effects for future software product release, upgrade download and access to supporting libraries/files.
  • Negotiated a long-term business relationship between our client, a major genetic diagnostic company, and a research organization under which our client sponsored a research program by the other party to develop the underlying technology for a major new business segment.  The negotiations centered on creating a structure for allocating ownership and other IP rights in the various developments produced by the research program depending on the development's ultimate commercial value.
  • Negotiated a settlement of an alleged infringement claim against a medical device manufacturer that resulted in a cross license of limited scope, thereby removing a cloud over our client's entire business.
  • Negotiated an expansion of a limited field of use license to enable our client to launch a new product line.
  • Counseled a major research hospital on a strategy for minimizing potential risks involved in licensing a portfolio of novel drugs.
Licensing
Overview

Technology transfer can be a critical function for many technology-based companies. A company may license rights to the core technology upon which it built its business or through which it expands into new technology. It may convert non-core patents in its portfolio into income-generating assets by licensing rights to others. Licensing can provide for a successful resolution of infringement and other IP-related disputes or serve as an inducement to others to legitimize their use of overlooked or ignored client-owned patents.

Hamilton Brook Smith Reynolds has extensive experience in all aspects of licensing and other technology transfer transactions. To meet the individual needs of clients in as efficient a manner as possible, the firm tailors its role on a case-by-case basis. Services run the gamut from providing consultation on a single intellectual property-related aspect of a larger transaction to participating as a full member of the team that handles the transaction from the initial nondisclosure agreement and letter of intent through the negotiation, drafting, and execution of the final documentation.

The firm's approach in this area provides clients with sophisticated, cost-effective counseling. Because all of our attorneys have technical backgrounds in the involved technologies, they anticipate problems that may arise during the negotiation and drafting process as the contemplated relationships develop. In addition, the attorneys in the firm who focus on licensing and other technology transfer work have experience in litigation, including litigation over license disputes. They are thereby able to provide clients with added perspective during the negotiation process.

Representative Experience
  • Counseled a start-up biomedical and diagnostic company in negotiating a license to platform technology.
  • Counseled a start-up biologics company in a licensing agreement with a major university covering a joint research project and associated development of intellectual property rights.
  • Prepared combined software-hardware use license with service agreements for a corporate maker of chemical and bio-tech manufacturing process equipment and components.
  • Counseled a major computer industry corporation on use of open source software components and effects for future software product release, upgrade download and access to supporting libraries/files.
  • Negotiated a long-term business relationship between our client, a major genetic diagnostic company, and a research organization under which our client sponsored a research program by the other party to develop the underlying technology for a major new business segment.  The negotiations centered on creating a structure for allocating ownership and other IP rights in the various developments produced by the research program depending on the development's ultimate commercial value.
  • Negotiated a settlement of an alleged infringement claim against a medical device manufacturer that resulted in a cross license of limited scope, thereby removing a cloud over our client's entire business.
  • Negotiated an expansion of a limited field of use license to enable our client to launch a new product line.
  • Counseled a major research hospital on a strategy for minimizing potential risks involved in licensing a portfolio of novel drugs.

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