Intellectual Property Transactions

In a global market, IP is a significant company asset that plays a critical role in commercial transactions

Drafting, negotiating, interpreting and advising on intellectual property agreements requires a special set of legal skills to effectively commercialize, exploit, secure, and license intellectual property rights. To ensure that you are capitalizing your IP to its fullest extent, you need a practitioner who is well versed in the relevant provisions of IP law, familiar with a wide range of commercial law subjects, various areas of regulation and is aware of commercial best practices in the relevant industry sector. Perhaps no other practice area exemplifies the benefit of DRM’s organizational structure as meaningfully as our intellectual property transactional work. DRM’s intellectual property team collaborates with the corporate attorneys on intellectual property transactions, not only regularly achieving clients’ business objectives, but also continually honing their respective skills when it comes to IP transactional matters.

DRM can help you commercialize, exploit, secure and license your intellectual property rights.

When licensing-in intellectual property of third parties, DRM’s IP attorneys join forces with our corporate team to ensure that the scope of the license fully enables our clients’ business models, and that the remaining terms are comparable to standard approaches taken in licensing similar IP. When licensing-out our clients’ intellectual property, DRM’s attorneys ensure that the scope of the license does not exceed what is reasonably necessary to enable the licensee’s business model given their payments and other consideration received by our licensor, and that the remaining terms are within general industry norms unless there is a reasonable basis for not doing so. A well-drafted IP license or other agreement is not just a form with a few blanks filled in. Structuring such agreements the right way early in the process helps our clients avoid potential legal challenges down the road that could frustrate their business objectives. We tailor transactional solutions to accomplish our clients’ objectives, and we use our legal project management system to ensure that we are meeting budgets and enabling our clients to clearly understand the business/legal tradeoffs for any given solution.

DRM’s attorneys draft, negotiate, interpret and advise on a wide variety of intellectual property transactions to your benefit.

DRM’s attorneys can help you maximize your intellectual property during acquisitions and divestitures of IP and technology assets, in both joint ventures and joint development arrangements, through licensing and technology transactions, as part of research and development agreements, or by securing intellectual property in debt transactions. Typically, the agreements utilized to obtain the highest value for your intellectual property will fall into one of three categories: Technology License, Patent License, or Patent Assignment Agreements. Here’s a more detailed description of DRM’s approach to each:

Technology License Agreements. DRM drafts and negotiates technology license agreements that include: scope of license, confidentiality, payment, warranty, termination and other provisions that strike a reasonable balance between maintaining the licensor’s control over its IP and enabling the licensee to practice the licensed technology.

Patent License Agreements. We draft and negotiate patent license agreements that include: description of the licensed patents, a description of the licensed products and a scope of license, payment, warranty, termination and other provisions that strike a reasonable balance similar to the one described above.

Patent Assignment Agreements. We draft and negotiate patent assignment agreements that include: listing or definition of the patents to be assigned – on a worldwide basis, a description of the rights licensed from the assignee back to the assignor, and payment, warranty, termination, and other provisions that strike a reasonable balance between the assignee’s assumption of title and the assignor’s license back to continue its business under the assigned patents. It is important to note that beyond simple form assignments by inventors to their employers, assignment agreements are often key aspects of larger and more complex commercial transactions.

If you’d like more specific information about our Intellectual Property Transaction capabilities, contact Kate Foley.

Recent Intellectual Property Transaction Legal Accomplishments

Our IP transactions attorneys bring together deep knowledge of IP law, business and technology to maximize the value our clients receive for their IP, and to ensure our clients obtain the IP rights they require. Here are some examples:

• A publicly traded client sold significant assets, consisting in significant part of know-how and patents, to a foreign company. DRM drafted a complex set of agreements to effectuate the transaction, which included patent assignment, license back, realty sublease, transfer of employees, security agreements and other provisions used in transactions of this sort.
• DRM drafted a complex patent assignment agreement under which the client received a license back as well as an ongoing revenue stream in the form of contingent installment payments. The agreement included assignment-back provisions in the event the other party defaulted, including a security interest to buttress the assignment-back provisions. Obtaining preferential tax treatment and preferential creditors rights all figured prominently in the drafting.
• A small business had group of patents that a large multi-national company needed to use. In spite of the “David and Goliath” positioning of the parties, DRM drafted and negotiated to signing a patent license agreement that was highly favorable to its client.
• To resolve a dispute involving patent ownership between a DRM client and another company who hired away an employee of the DRM client, we helped structure an arrangement where the other company agreed to assign the patent to the DRM client. In turn, the client licensed the patent back to the company under narrow territorial and field of use provisions. DRM then drafted and negotiated an agreement memorializing the arrangement.