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Technology Transactions and Licensing

Technology Transactions and Licensing At a Glance

Attorneys in the Duane Morris Technology Transactions & Licensing practice group assist a wide range of clients with maximizing company value from the intellectual property and technology assets that they own or license from third parties. Drawing on the resources of Duane Morris' Intellectual Property and Corporate practice groups, the attorneys in the group combine the elements of an intellectual property practice with a commercial transactions practice. They are trained in the best practices in these disciplines, enabling them to provide guidance on a wide range of intellectual property and business issues involved in IP licensing and technology matters and transactions.

Attorneys in the group have experience with clients in many industries, such as biotechnology and pharmaceuticals; medical devices; diagnostics; life sciences; healthcare; information technologies, including hardware and software; Internet and e-commerce; telecommunications; video games; entertainment; retail; and financial services. Attorneys in the group work with companies of all sizes at all stages of development, including emerging growth companies, middle-market companies and established vendors of technology goods and services, to partner or sell their IP and technology assets. They also assist clients to in-license or otherwise acquire IP and technology assets, as well as to establish technology service arrangements.

Attorneys in the Technology Transactions & Licensing practice group counsel clients on structuring, negotiating and implementing collaborative and licensing transactions that often have a significant impact on a company's business. With their extensive experience in these types of transactions and knowledge of both sides of contract issues, our attorneys assist clients on establishing the core IP and business terms and structure of the deal. They also act as problem solvers for complex and difficult contract issues. Clients value the ability of the attorneys in the group to manage the deal negotiation process in an effort to maximize speed-to-signing while minimizing legal expenses.

Duane Morris Technology Transaction & Licensing practice group attorneys frequently help clients with regard to:

  • Joint ventures and strategic alliances
  • Collaboration and co-development agreements
  • In-bound and out-bound patent and technology licenses
  • Third-party arrangements with employees and consultants
  • Manufacturing and supply agreements
  • Distribution and reseller arrangements
  • Branding and marketing arrangements
  • Business process outsourcing arrangements
  • Nondisclosure agreements

Attorneys in the group work closely with attorneys in the firm from other practice areas, which are often relevant for technology transactions, such as FDA; antitrust; bankruptcy; export control; government contracting; revenue recognition rules; security interests; and complex, multi-jurisdictional issues relating to privacy and security of information.

In conjunction with deal structuring, attorneys in the group also assist clients with IP due diligence, and their strategic planning and/or open innovation strategies, including assessing and identifying the client's existing intellectual property; advising on protecting this intellectual property and counseling on areas of growth and the potential for licensing; and acquiring and selling intellectual property in order to realize maximum value for the business. For software matters, attorneys in the group advise on open source issues.

Attorneys in the group also assist clients with IP management and audits, including software audits.

For More Information

For more information, please contact John M. Neclerio, David A. Charapp or any of the group members referenced in the Attorney Listing.

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