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IP Licensing, Transactions, and Agreements

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IP Licensing, Transactions, and Agreements Image

Litigation

Post-Grant

Prosecution & Counseling

Agreements affecting intellectual property assets are critical to the underlying value of those assets. Great intellectual property can be diminished through agreements of poor quality. Likewise, the relative value of any intellectual property can be enhanced through thoughtful and effective agreements. Fish & Richardson’s licensing practitioners routinely handle more than 100 different types of intellectual property licensing and technology agreements for organizations ranging from start-ups, to technology transfer offices, to multinational corporations.

“The consolidated licensing taskforce [of Fish & Richardson] … is one of the best in the country.” – IAM Patent 1000, 2015

Our licensing professionals provide world-class strategic assistance with licensing and technology agreements via a unique combination of skill sets: a deep understanding of the underlying technology, significant business acumen, and a thorough understanding of the applicable legal principles. Attorneys within our licensing practice are licensed patent attorneys and have previously served as in-house counsel or have owned their own businesses. The combination of these legal and practical skill sets allows our licensing professionals to be a valued part of your efforts to protect and commercialize your intellectual property.

Our recent success stories include:

  • Drafting and negotiating a Technology License Agreement between an optical communications company (client) and a foreign investor group where the client licensed certain of its IP rights to the investors for >$50MM;
  • Drafting and negotiating a $225MM Asset Purchase and License Agreement under which a national insurance carrier (client) purchased and licensed back certain software and back-office assets from a third party that had developed and been providing back-office services for client;
  • Drafting and Negotiating an Artist Agreement under which a larger retail company (client) engaged a famous artist to create and restore some artwork for the client’s headquarters;
  • Drafting and negotiating a Restated and Amended Exclusive License Agreement between a biotech company (client) and a major university in connection with a billion dollar/year emerging technology co-developed by the parties;
  • Drafting and negotiating a Joint Development Agreement between a global provider of security services (client) and a global tech company under which the parties will collaborate on a first-of-its-kind marriage of technology;
  • Drafting and negotiating a Data Transmission and Access Agreement under which a provider of insurance rating services (client) will share data with a global financial services firm to improve related services to client’s customers;
  • Drafting a Software License Agreement between a non-profit organization (client) and a for-profit application development company under which client’s collaborative software platform (matching solo service providers with paying customers) will be available through a mobile app;
  • Drafting an Application Development Agreement between a global provider of powertrain solutions (client) and a mobile application developer for the custom development of a mobile app for use in client’s business;
  • Drafting a Software Subscription Service (SaaS) Agreement for the provider of pioneering electronic health record software (client) and related services for use with dozens of licensees;
  • Drafting a Joint Development Agreement for venture capital group (client) and team of university researchers, enabling the venture capital group to patent and commercialize the researchers’ technology;
  • Drafting and negotiating a Quitclaim Assignment and Royalty agreement between a leading provider of electro-optical systems and services (client) and an independent consultant group;
  • Drafting a Joint Development Agreement for non-profit organization (client) and third-party design team, enabling the non-profit organization to patent and commercialize the design team’s technology;
  • Drafting and negotiating a $50M/year Patent License Agreement between a leading robotics company (client) and a multinational gaming company for the client’s technology to be used in the production of new products;
  • Drafting and negotiating a Software Development Agreement between an international toy manufacturer (client) and a software company to provide a customer OS for the client’s products;
  • Drafting and negotiating a $30M/year Patent License Agreement between an oil field equipment manufacturer and an oil field services company (client);
  • Negotiating a License, Development and Commercialization Agreement between a biotech start-up (client) and a leading global pharmaceutical company for the client’s technology to be used in animal health pharmaceutical and diagnostic products;
  • Drafting Intra-Company Assignments and Licenses to assist a web-based services client in the worldwide protection and licensing of its IP; and
  • Drafting and negotiating an Assignment agreement between a major university (client) and a team of researchers, enabling the technology developed by the team to be independently commercialized.

Our attorneys have been named some the world’s top patent and licensing attorneys by Intellectual Asset Management magazine, and we are frequently asked to speak at industry events and present to the staffs of university technology transfer offices on licensing best practices.

For a representative list of agreements our professionals have handled for clients, click here.



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November 19, 2020
Fish & Richardson Principal William Hunter Named a 2020 Leader in Law Honoree by the San Diego Business Journal
Press Release
Recognition
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Event
December 3rd, 2020 | 1:30 pm EST
Webinar | Licensing 101
Webinar
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September 10th, 2020 | 1:30 pm EDT
Webinar | Open Source Software: Practical Ideas for Protecting Your Intellectual Property
Webinar
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August 10, 2020
Four Fish & Richardson Principals Named 2020 “Women Worth Watching in STEM” by Profiles in Diversity Journal
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Recognition
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March 3, 2020
Fish & Richardson Named Top Trademark Law Firm for 10th Straight Year by World Trademark Review
Press Release
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News
January 14, 2020
Fish & Richardson Named Law360 Life Sciences and International Trade Practice Group of the Year
Media Mention
Recognition
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October 14th, 2018
Licensing Executive Society (LES) 2018 Annual Meeting
Speaking Engagement
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September 17th, 2017 | 8:00 am PDT
45th Annual Meeting of the Intellectual Property Owners Association
Sponsorship
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June 2, 2017
Two Fish Principals Named Energy & Environmental Trailblazers
Press Release
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Event
June 22nd, 2017 | 4:00 pm CDT
Patents on Tap | License to Innovate: University of Minnesota and Mayo Clinic
Speaking Engagement
Event
May 23rd, 2017 | 8:30 am PDT
Momentum: 2017 IP Counsel Exchange San Jose
Speaking Engagement
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Event
May 17th, 2017 | 11:00 am PDT
AIPLA 2017 Spring Meeting
Speaking Engagement
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