Licensing Agreements

To what end does an IP asset serve? Is it to exclude competition? Maximize price? Gain market share? Slow price erosion? Generate a revenue stream? Structure funding? Do the profits derived from the sale of a patented product support or drive the sale of other nonpatented products? Is the licensing venture a prelude to positioning a company for a merger, acquisition, strategic alliance, or joint venture?

IP assets and patents, in particular, are economic tools, and the aforementioned questions lie at the heart of identifying a company's endgame for its IP portfolio. We advise companies when a transfer of their IP rights, whether by way of license or assignment, may best serve the company's overall goals, as well as those for a particular IP asset or group of IP assets. In such cases, we assist our clients with negotiating the terms of the license or assignment agreement and draft such agreements to effectuate the client's goals.

In financing transactions, we assist clients in clearing and perfecting title to pledged IP assets and in valuing the IP assets in order to obtain the maximum funding desired. IP assets, unlike tangible assets, require patentees to take a more active role with lenders in the valuation process. We have worked with leading economists in the valuation of clients' IP portfolios, the establishment of royalty rates, and the development of return on investment models for new business ventures built around clients' developing technology.

In acquisitions, we perform due diligence to identify and evaluate the IP assets of the target, so as to help clients gain their strongest advantages in negotiations.

Likewise, successful strategic alliances, mergers, and joint ventures require a thorough understanding of IP issues that often are drivers of the potential strategic business relationship. The Firm offers its international clients advice on cross-border mergers and acquisitions, as well as the formation of joint ventures with companies in Europe and in Asia. Post acquisition, we work with our clients to integrate the target's IP assets into the client's overall portfolio and develop a streamlined, cost-effective, bottom-line enhancing, and global IP strategy. We also provide risk management advice regarding disputes over IP assets that arise from corporate transactions.