Licensing & Technology

Licensing and technology transfer

Businesses that require or want to use technology and other IP assets to attain or maintain a competitive edge generally deploy one or a combination of three approaches:

• Invest in research and development (R & D) and create IP in house.
• Merge or acquire a company that has the IP needed.
• Partner with a company that owns the IP needed, either through franchising, consultancy, strategic alliance, joint venture or licensing.

Licensing is often the best way to go: it can get your product launched sooner and offers high reward with minimum investment. Then, too, licensing may be necessary to facilitate various aspects of franchising, strategic alliances or joint ventures.

Negotiating and drafting sensible licensing agreements

IP transfer licenses can benefit licensees by:

• Improving the quality of their products, production, management structure, control or communication
• Getting their product to market on time
• Expanding into new markets
• Saving money and time on research they would otherwise have to do themselves
• If licensing a trademark, burnishing marketing efforts to benefit from the licensor’s reputation and goodwill

IP transfer licenses can benefit licensors by:

• Sparing the trouble of having to take up production; the licensor can focus on R&D and leave it to the licensee to handle manufacturing, distribution and marketing
• Getting the licensor’s product to market on time
• Expanding into new markets
• Generating additional income
• Control over the use of a product

A technology licensing agreement enables an enterprise to enter a foreign market quickly, posing fewer financial and legal risks than owning and operating a manufacturing facility or participating in a joint venture overseas. Licensing also permits U.S. firms to overcome many export-hampering tariff and nontariff barriers.

Our licensing and technology attorneys counsel enterprises on all aspects of licensing. We conduct due diligence, draft and negotiate complex agreements, and resolve disputes between parties related to the acquisition, licensing and use of patents, copyrights, trademarks and other IP. We also provide confidentiality agreements to protect business and technical disclosures during the negotiations and thereafter.