Our attorneys have in-depth knowledge and expertise in handling licensing, procurement, supply, distribution, manufacturing, outsourcing, sales and technology transfer transactions that involve intellectual property such as patents, trade secrets, trademarks and professional services. Our experience includes a wide-variety of transactions involving the most advanced biosciences, green energy and "high-tech" technologies for and on behalf of small to large, multi-national publicly-traded and private companies.
Among the strengths of our attorneys is their diverse experience in business, technology law and intellectual property, which allows them to provide exceptional business-focused legal advice in relation to these complicated transactions. The firm has participated in licensing and other intellectual property and technology-based transactions engaged in by a broad range of businesses, including biotechnology, pharmaceutical, medical device, green energy, computer software, financial services, entertainment, professional services, healthcare, and e-commerce companies.
In such capacity, we have handled and negotiated the licensing of technology employed in the integration of software systems for various hospital systems, disparate physician practices and related ancillary service providers, including a federally-sponsored pilot program to integrate the software systems for 13 hospitals and various physician practices in the southern US. Other such licensing transactions include hosting services agreements, directory services agreements, and co-branding agreements for large-publicly traded companies, and out-licensing of technology agreements and related agreements, both within the US and internationally.
For the biosciences industry, we have extensive experience in the negotiation of license agreements, which experience includes agreements between biotech companies and research institutions, between biotech-to-biotech and between biotech-to-pharma. In the last seven years alone, we have represented over 60 companies within the biosciences industry, which has enabled us to garner substantial industry expertise. Our expertise ranges from the handling of exclusive option agreements for the licensing of technology, exclusive and non-exclusive license agreements for patented technology and know-how, material transfer and testing agreements, sponsored research and gift agreements, and clinical trial agreements.
Key to many of these type of agreements are issues on which we regularly advise our clients, such as the definitional scope of the technology licensed, rights to improvements, reach-thru licensing, royalty rates and adjustments thereto for combination products, anti-stacking, multiple products and use of non-patented licensed technologies, as determined on a country-by-country basis, fully-paid up license agreements, annual maintenance fees, minimum royalties, milestone payments and sublicensing fees, along with the related adjustments and carve-outs, patent fees and costs, division of infringement awards, pivotal termination clauses, assignment provisions, representations and warranties, due diligence requirements and equity "kickers."
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