Licensing & Commercial Transactions

Our team of intellectual property and business lawyers offers a full range of transactional services to develop, protect, and commercialize valuable technology and intellectual property.

Delivering What Our Clients Want

Our lawyers use their legal and technological expertise along with their experience working closely with businesses to counsel clients on capitalizing on their technological and intellectual property assets.  

We understand the costs and burdens that litigation, even prospective litigation, imposes on a business. We work with our clients proactively to strategically identify and resolve issues before a dispute reaches the courtroom.  We employ a wide range of approaches tailored to the unique goals of each client, including establishing or procuring necessary rights and negotiating settlements, license agreements, and other technology and business arrangements.

Comprehensive Expertise

Virtually every business has valuable intellectual property.  Many companies in Silicon Valley and beyond rely on our team of attorneys to identify, protect, transfer, and commercialize their intellectual capital and other intangible assets.  Our clients, from a wide spectrum of goods and services industries, seek our counsel in multiple areas touching technology and intellectual property issues, including:

Licensing

  • Research and development joint ventures, projects and agreements
  • Strategy for the development and monetization of IP
  • Manufacturing and distribution agreements
  • License agreements
  • eCommerce

IP Sales and Transfers

  • Asset sales
  • M&A transactions and reorganizations
  • Start-ups

IP Audits and Due Diligence

  • Financings
  • M&A transactions
  • Private placements

IP Asset Management

  • Portfolio development
  • Status tracking and watch services
  • Employee and consultant agreements and training
  • Represented security software company in licensing of hosted and on-premise software to worldwide online payment system provider and worldwide hospitality company.
  • Negotiated right of publicity releases for decedent’s successor with numerous public companies for use of decedent’s voice in commercials.
  • Represented solar power system provider in negotiation of multi-million dollar solar system installation contract with builder and homeowner.
  • Represented secure identity product manufacturer in technology license and service transaction with shared workspace provider.
  • Represented a biological products client in the preparation of development, manufacturing, and license agreements with a pharmaceutical products start-up, and business reorganization effected to segregate intellectual property assets for the commercialization of novel products.
  • Structured reorganization of a software distributor to facilitate the development of proprietary software through offshore subsidiaries; prepared related licenses, online agreements and policies for the delivery of cloud-based data services.
  • Represented the owner of IP rights in a complex business sale transaction including exclusive license agreements for the commercial use, production and global distribution of artistic properties.
  • Negotiated and prepared a feature film production agreement for a historic attraction and related licenses for use of information, historic materials, venues, trademarks, other proprietary matters and merchandising.
  • Counseled a semiconductor industry manufacturer on the preparation of licenses for patents and related technology.
  • For a developer of automotive component technologies, licensed patents and know-how in order to successfully commercialize the technologies for use in global automobile manufacturing.
  • Assisted a public security software and systems company in the preparation of license and service agreements with government agencies and foreign governments, license enforcement, and litigation.
  • Represented a software start-up in its acquisition by a large public technology company as a means of transferring a valuable patent portfolio and technology.

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