IP Licensing and Transactions

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Dickinson Wright’s IP Licensing and Transactions practice group excels in the licensing and disposition of intellectual property and innovation-rich assets, including software and technology, patents, trademarks, and trade secrets. The practice’s roster includes many intellectual property attorneys who have worked in the industry prior to becoming attorneys. In addition, most have also worked in-house as IP attorneys and are known for understanding how licensing arrangements and related transactions arise within a business context. With this combination of experience, we are best known for walking our clients through the entire process, from product development to protection and licensing. We are also known for understanding business budgets from an in-house perspective and operating well within such budgets.

We serve a wide range of clients in many different industries, including automotive, education, healthcare, life sciences, agriculture, energy, and information technology. We handle a range of IP licensing and transaction matters, such as:

  • Software and technology licensing, including for universities and healthcare organizations
  • Cross-licensing to resolve disputes
  • Traditional patent licensing
  • Unpatented technology licensing
  • Trade secret licensing
  • Chemistry formula licensing
  • Joint development arrangements
  • Collaboration agreements
  • Joint Ventures

We have several attorneys who serve on technology boards, including as legal counsel to a technology advisory board for automotive light and heavy vehicle industries, as well as universities and associated trade organizations.

Our licensing practice offers an impeccably high standard of work emanating from our numerous offices across the country. Our coast-to-coast service provides a national network of intellectual property and technology licensing attorneys capable of handling expansive and complex matters. Our seamless platform allows access to both subject matter experience and other non-IP specializations, such as corporate law and litigation, to ensure all facets of a deal are addressed.

We have recently focused on creating and providing license term sheets to make the transactions more efficient and productive and reduce drafting disputes during negotiations. These term sheets are created and shared electronically within the firm for multiple attorneys’ use across many industries.

In addition, we regularly assist with innovation harvesting in order to increase the technology portfolio being offered by our clients. In doing so, the value capture can be increased in many cases, thereby generating more revenue for our clients.

Representative Matters

  • Representing prolific inventors in patent portfolio licensing.
  • Assisting nanotechnology company in deploying a proven chemotherapy drug delivery formulation/platform for application to hemp-derived cannabinoid products, which involved licensing a portfolio of issued and pending patents for a specific field of use.
  • Managing the global trademark filing, enforcement, licensing, and clearance strategy for a variety of clients.
  • Assisting clients in deploying technology platforms with the potential for numerous facilities.
  • Negotiating option agreements to license technology from the government.
  • Defending mobility technology companies in an alleged breach of patent license agreements.
  • Representing manufacturing contractors in cases alleging breach of a patent license agreement.

 

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