Intellectual Property Transactions

/Overview

We provide legal guidance regarding the strategic, operational, and technical aspects of intellectual property transactions and associated policies.

Our cross-industry client portfolio ensures we stay ahead of emerging trends and marketplace standards around the world, and we understand IP transactions must efficiently advance business objectives, meet the nuanced demands of stakeholders, and seize opportunity while mitigating risk. 

Serving as an extension of our clients’ teams, we are engaged in myriad acquisitions and divestitures, licenses, joint ventures and alliances, and other transactions involving copyrights, patents, research, trademarks, and trade secrets.

Our research-related services also include counseling in the procurement and management of state and federal grants and contracts and supporting related compliance efforts.

We advise on technology transactions that involve software development and implementation, content and data licensing, SaaS, reseller arrangements, business process outsourcing, data privacy, and IT security issues.

Our team also works to protect and commercialize the intellectual property of brands, talent, their management, and advertising agencies across entertainment and social media platforms—creatively structuring and negotiating agreements related to TV, film, live theater, book publishing, and music.

/Representative experience

• Advise companies engaging with the technology transfer offices of academic and research institutions, including representing Xilis, a biotech company with a precision oncology platform technology, in establishing a strategic research partnership with MD Anderson Cancer Center; NS Nanotech, a developer of nano-LED products, in structuring research and license agreements with McGill University and the University of Michigan; Iotron Medical, a clinical radioisotope provider, in various license and research transactions with Argonne National Laboratory; and Serimmune, an immune intelligence company, in research agreements with Yale University.
• Provide a range of technology transfer services as an extension of the in-house team to support licensing, contracting, grant compliance, and related operational matters for leading academic institutions and healthcare systems, such as multiple campuses within the University of California system and Seattle Children’s Hospital.
• In one of the largest transactions in academic technology transfer history, represented Cedars-Sinai Medical Center in the $10.8B sale of Cedars’ spin-off company, Prometheus Biosciences, to Merck; handled patent prosecution, IP licensing, research agreements, corporate matters, follow-on investments, and an array of other topics as Cedars developed the Prometheus technology, lead candidate therapeutics, and the unique biorepository of patient samples and genomic data that continue to drive Prometheus’s R&D activities through a series of enduring research, license, and consulting relationships.
• Represented Augment Therapy, an award-winning digital health company that engages patients in immersive, gamified exercises, in its collaborations with Sesame Workshop, Sesame Street’s nonprofit organization, and Peridot, an augmented reality video game featuring virtual pets, to feature iconic characters from the franchises in its behavioral and physical health platforms, respectively.
• Advise a wide range of public and private companies on the comprehensive outsourcing (both onshoring and offshoring) of various aspects of their IT infrastructure, including data center infrastructure operations and application management and infrastructure—utilizing various models, such as project-based, staff augmentation, and dedicated teams outsourcing.