IP and Technology Licensing and Transactions

Dechert’s dedicated IP and technology licensing and transactions team are attorneys experienced in IP and technology law who structure and negotiate domestic and cross-border deals every day. We have extensive hands-on experience advising our clients on the full spectrum of IP-related issues which arise in a commercial context and typically drive their businesses. We have deep expertise in patent, copyright, trademark, trade secret and software issues and routinely apply this expertise in complex licensing and technology transactions. We have broad experience developing creative and pragmatic solutions designed to ensure that our clients’ commercial activities, licensing programs and transactions are optimized and fully in sync with their strategies for protecting and promoting their intellectual property.

Our experience, which spans industries, continents and different business cultures, includes establishing and preserving rights in new technologies and services; securing IP rights from inventors and developers; optimizing IP value through licensing agreements; creating synergies via co-development and joint venture arrangements; and evaluating, negotiating and structuring mergers and acquisitions involving technology assets.

Our clients include major players in the life sciences (pharmaceuticals, biotechnology, medical devices and diagnostics), technology (computers, software, semiconductors, and digital technologies), financial services, media and manufacturing industries. We know the IP issues unique to each of these sectors and how to resolve them consistent with our clients’ commercial needs. Understanding what drives a client’s business and how best to optimize its market position goes to the heart of why our lawyers are able to move so many deals to a successful close.

Our relationship with clients typically extends beyond particular transactions. Clients routinely turn to our IP and technology transactional lawyers for counsel with respect to the day-to-day protection and commercialization of their IP assets. We counsel clients on IP protection strategies, structuring licensing programs, protecting and enforcing IP rights in patents, business methods, data, knowhow, trademarks, software and Internet-based systems, conducting IP due diligence, establishing data security and data privacy policies and avoiding risks from infringement or misappropriation of IP owned by third parties.

The transactions we support often involve cross-border issues and our IP lawyers in the United States, Europe and Asia routinely work together on such projects. Dechert’s transactional practice includes advising, negotiating and structuring IP licensing agreements, IP-related joint ventures and strategic alliances, development, co-development and co-promotion agreements, service agreements, IP-driven mergers and acquisitions, technology transactions and outsourcing arrangements.

License Agreements

Our IP transactional lawyers prepare and negotiate complex license agreements to enable our clients to commercialize their IP as well as to gain access to desirable third-party IP. After taking the time to understand our clients’ short- and long-term business goals, we tailor agreements to maximize the return and mitigate any risks that may be associated with the particular transaction.

Joint Ventures, Strategic Alliances and Development Collaborations

We help clients resolve the thorny issues that arise in joint ventures, strategic alliances and collaborative developments involving the exploitation of IP and technology, such as cross-licensing arrangements; co-development programs, including ownership of improvements; collaboration on IP litigation, licensing and commercialization, prosecution and enforcement; and allocation of rights post-collaboration. We also counsel on the IP aspects of large-scale joint operations agreements with international ramifications.

Acquisitions and Divestments

Ranked among the top M&A legal advisors by the most prominent league tables, including Bloomberg, Thomson Financial, Corporate Control Alert, Mergerstat and mergermarket.com, Dechert lawyers negotiate and structure strategic mergers, acquisitions, divestitures and spin-offs to enhance the development and commercialization of new technologies and scientific breakthroughs.

IP Due Diligence

We perform IP due diligence assessments of deals for pre-public startups, large publicly traded companies, private equity and venture capital investors, issuers of commercial papers and underwriters. The scope of such projects includes assessing patent, trademark and copyright portfolios, reviewing license agreements, confirming IP ownership, assessing the adequacy of IP disclosures under securities laws, evaluating the strength and value of lead programs and developed and clinical stage products, assessing trade secret protection programs and the management of data privacy issues and appraising R&D programs. Because our assessments are critical to our clients’ decisions regarding potential investments, acquisitions, mergers, joint ventures, co-developments and licensing arrangements, we are committed to providing all of the information required to make an informed decision while also being sensitive to cost considerations.

Technology Service Agreements

We advise clients on agreements with technical services providers, software vendors, third-party publishers, outsourcing companies and financial services firms pertaining to the configuration and implementation of arrangements for the provision of technology-based services, including software development and support, digital identity authentication, country risk analysis, application provider and Internet access. We have also assisted companies in establishing proprietary electronic platforms that provide data, products, research and related services worldwide; drafting and negotiating user agreements, vendor hosting and support agreements and customer licenses and terms of use; and creating and providing private label systems.