Corporate

IP and Technology Licensing and Transactions

Maximizing the commercial value of intellectual property

Dechert’s IP and technology licensing and transactions team advises on a wide range of domestic and cross-border transactions relating to the commercialization of IP and technology assets.

Our clients include developers, owners, licensors, licensees and buyers of IP and technology, seeking to maximize the commercial value of their IP assets. We advise clients on and routinely negotiate a broad range of transactions and the full spectrum of IP-related issues to develop, protect and enforce IP assets, expand market share and make a significant impact in the marketplace. We use our in-depth understanding of our clients’ business models and our deep expertise in patent, software, trademark, copyright, trade secret, software, technology and privacy issues to deliver comprehensive solutions to meet our clients’ business goals and requirements.

Comprehensive IP services

Dechert’s IP and technology licensing and transactions lawyers structure and negotiate deals every day. We understand the key differences in legal regimes, and regularly advise on the conduct of cross-border IP transactions and worldwide licensing programs. We also advise on joint ventures and strategic alliances, collaborations, license agreements, co-development agreements, software development, service agreements, mergers and acquisitions and outsourcing arrangements, and help our clients negotiate and execute on such IP-driven transactions.

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, conducting IP due diligence, establishing data security and data privacy policies and avoiding risks from infringement or misappropriation of IP owned by third parties.

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.

Integrated transactional IP support

Industry-leaders rely on Dechert’s transactional experience and expertise to help them with the intellectual property and technical issues at the core of their transactions. We provide strategic advice to navigate the complexities of asset protection and commercialization across jurisdictions, combining sophisticated IP know-how with pragmatic commercial solutions to get the deal done. Our global team includes lawyers with advanced scientific degrees who have performed numerous IP diligence projects on behalf of U.S. and foreign companies. We investigate beyond the obvious IP issues to detect potential problems or business issues that could impact valuation. Working together with members of Dechert’s leading corporate and M&A practices, we provide comprehensive IP support for mergers and acquisitions and other corporate transactions, including deal structuring, IP due diligence, and negotiation of relevant IP terms and agreements.

License agreements

Our IP transactional lawyers prepare and negotiate complex license agreements to help clients commercialize their IP and gain access to desirable third-party IP. We routinely advise on licensing of patents, software, software-as-a-service (SaaS), data, trade secrets and knowhow. We take the time to understand our clients’ short- and long-term business goals, then tailor agreements to maximize the return and minimize the risks associated with a particular transaction.

Joint ventures, strategic alliances and development collaborations

We help clients resolve issues arising from joint ventures, strategic alliances and collaborative developments involving the exploitation of IP and technology, such as cross-licensing arrangements, co-development programs, collaboration on IP litigation and allocation of rights post-collaboration. We also counsel on the IP aspects of large-scale joint operations agreements with international ramifications.

IP due diligence

Dechert lawyers 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. We counsel clients on choosing the deal structure that will maximize the value and enforceability of their IP assets. Our IP diligence 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.

We recognize that our assessments are critical to our clients’ decisions on potential investments, acquisitions, mergers, joint ventures, co-developments and licensing arrangements, so 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.

Our team also assists 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.

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