Technology Transfer & Licensing


Well-versed in extracting the maximum value from intellectual property assets, we help universities, research institutes and academic medical centers successfully bring new technologies and innovations to market, and represent these clients in IP enforcement matters.

Our Approach

For more than 20 years, we have partnered with technology transfer offices at universities and research institutions to help identify, protect, monetize and enforce their IP, while working within the increasingly complex world of academic research and industry collaborations. This includes working with the country’s most distinguished academic medical centers, state and private universities, research hospitals and other provider organizations, related businesses, research institutes and patient advocacy organizations to build and maintain thriving, strategic programs.

Our interdisciplinary team includes IP lawyers, patent agents and technical specialists with advanced technical degrees in the sciences and engineering, alongside transactional lawyers and litigators that know the legal and business challenges clients confront in the technology transfer environment. Our team understands the trends shaping the future of technology transfer, including the emerging efforts of some academic institutions to directly enforce their IP rights against industry infringers. We leverage the collective resources of our corporate, litigation, regulatory, tax, employment and government contracting capabilities to serve the evolving needs of tech transfer programs and ensure clients can easily navigate every possible business and legal obstacle.

Our Services

We strive to operate as a seamless extension of our clients’ in-house operations, offering practical guidance, creative solutions and a range of tailored services to meet each technology transfer program’s individual needs. For instance, we have developed strong relationships with litigation funders seeking to finance patent enforcement campaigns, and have the experience to guide our technology transfer clients through this process and make use of these innovative resources.

Our services include intellectual property procurement and enforcement; negotiating and structuring licensing agreements, material transfer agreements, sponsored research agreements, clinical trial agreements and other research and IP-oriented collaboration agreements; developing and revising institutional IP policies, technology transfer operations and template agreements; formation and follow-on financing of spin-offs; and supporting operational aspects of internal and external research/venture funds, technology accelerator programs and incubators.

Our Experience

  • Represent The Regents of the University of California in a groundbreaking patent enforcement campaign to protect its rights in a revolutionary new generation of light bulb technology known as filament LED that was invented by a Nobel laureate-led team at UC Santa Barbara. As the accused products are made by foreign manufacturers, this campaign is brought against major U.S. retailers in parallel proceedings before the U.S. International Trade Commission and in the U.S. District Court for the Central District of California.
  • Assist the University of Southern California (USC), a private research university located in Los Angeles, California, with a range of patent prosecution matters.
  • Assist the Wyss Institute, a cross-disciplinary research institute at Harvard University focused on developing new bioinspired materials and devices for applications in health care, manufacturing, robotics, energy and sustainable architecture, in building a patent portfolio related to specific technologies.
  • Assist Cedars–Sinai Medical Center, a nonprofit, hospital and multi-specialty academic health science center located in Los Angeles, on a range of patent prosecution matters and tech transfer matters, including licensing and spin-off transactions, equity investments, collaboration agreements, material transfer agreements and confidentiality agreements.
  • Assist Brigham and Women’s Hospital, a major Boston research hospital, which is part of the Partners Healthcare not-for-profit health care system, in creating a program to educate researchers and hospital technology transfer staff on IP protection to protect specific technologies.
  • Assist the California Institute of Technology (Caltech), a private doctorate-granting university located in Pasadena, California, with a range of patent prosecution matters.
  • Represent Dignity Health, a California-based not-for-profit public-benefit corporation that operates hospitals and ancillary care facilities in three states, in patent prosecution matters as well as a range of other technology transfer issues, including revising its IP policy, supporting its material transfer agreement (MTA) contracting for its internal biobanks and other exchanges of research materials and representing it in multiple license negotiations for biotech and digital health technologies.
  • Represent Children’s Hospital Los Angeles, a nonprofit, pediatric academic medical center in Los Angeles, in a clinical study and commercialization collaboration for a drug treatment.
  • Represent the UC Santa Barbara in several iterations of negotiations with one of its biotech spinoffs. This work included restructuring UC Santa Barbara’s equity and license relationship with the company to address the complexities of the company’s partnerships with numerous pharmaceutical companies.
  • Represent the International Myeloma Foundation, a nonprofit organization that serves patients with myeloma, a cancer of plasma cells in the bone marrow, and the Addario Lung Cancer Medical Institute, a patient-founded nonprofit research consortium established to help make lung cancer a survivable disease, in connection with their management of various clinical trials, academic research grant awards and other research operations.

The China Spy Scandal that Entangled Harvard Could Hit Yale and MIT Next

Newsweek | February 29, 2020

Boston Government Investigations and White Collar Defense partner Brian Kelly provides third-party commentary in this article about investigations into scientists and researchers at universities across the country for alleged theft of intellectual property and U.S. secrets as part of a long-term Chinese campaign.

Universities should consider ITC for IP protection

Tech Transfer Tactics | February 18, 2020

Intellectual Property partners Evan Langdon of Washington, DC, and Shawn Hansen and Seth Levy of Los Angeles co-wrote this article explaining how the U.S. International Trade Commission (ITC) can be a “powerfully effective venue” for patent protection. Evan, Shawn, and Seth are leading the NP team representing the University of California in an investigation pending at the ITC concerning LED lightbulb technology. Read the full article on techtransfercentral.com.

What the University of California case means for retailers and IP in the supply chain

TotalRetail | February 13, 2020

This article analyzes the potential for lasting implications to the global supply chain as a result of the University of California’s (UC) patent enforcement campaign against several retailers selling filament LED lightbulbs. Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen are the lead attorneys representing UC.

Central Coast tech firms, UCSB use litigation to protect patents

Pacific Coast Business Times | February 07, 2020

The article mentions Nixon Peabody’s ongoing representation of the Regents of the University of California in UC Santa Barbara’s patent enforcement matter, noting that a recent $1.1 billion verdict for the California Institute of Technology in another matter could bode well for UC Santa Barbara. Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen are the lead attorneys representing UC.

Think universities are making lots of money from inventions? Think again

The Hechinger Report | January 17, 2020

In this article about the ways universities succeed or fail in monetizing their intellectual property, Los Angeles Intellectual Property partner Seth Levy talks about NP’s patent enforcement work on behalf of the University of California.

University of California targets General Electric in campaign against patent infringement

Tech Transfer Central | January 08, 2020

This article quotes Los Angeles Intellectual Property partner Seth Levy discussing Nixon Peabody’s representation of the University of California, which has sued General Electric as part of its ongoing campaign to enforce its patents on LED lightbulb technology. Seth and Los Angeles Intellectual Property partner Shawn Hansen are leading the NP team.

UCSB adds GE to lawsuit defending LED patents

Pacific Coast Business Times | January 02, 2020

Los Angeles Intellectual Property partner Seth Levy is quoted in this story covering the latest developments in UC Santa Barbara’s patent enforcement campaign to protect its LED lightbulb technology, including the addition of General Electric as a defendant. Seth and Los Angeles Intellectual Property partner Shawn Hansen are leading the NP team.

LEDVANCE Reaches Agreement on UC Santa Barbara's Patented LED Technology

Yahoo! Finance | December 02, 2019

This announcement related to UC Santa Barbara's first-of-its-kind patent enforcement campaign shares that LEDVANCE, one of the world’s leading general lighting providers, has entered into a licensing agreement that authorizes the company to manufacture and distribute UC Santa Barbara’s patented filament LED technology. LEDVANCE is the largest manufacturer to date that has signed a licensing agreement. The announcement mentions Nixon Peabody for representing UC Santa Barbara.

Contacts

Seth D. Levy

Partner
Co-chair, Life Sciences Practice

slevy@nixonpeabody.com

Phone: 213-629-6161

David S. Resnick

Partner

dresnick@nixonpeabody.com

Phone: 617-345-6057

  • Managing Intellectual Property magazine’s 2020 rankings named nine Nixon Peabody attorneys as “IP Stars” among the world’s leading intellectual property practitioners
  • U.S. News/Best Lawyers “Best Law Firms” 2020 ranked as National Tier One in: Appellate Practice, Commercial Litigation, Corporate Law, Employment Law—Management, Energy Law, Franchise Law, Health Care Law, Labor Law—Management, Litigation—Construction, Litigation—Labor & Employment, Litigation—Real Estate, Mass Tort Litigation/Class Actions—Defendants, Patent Law, Public Finance Law, Real Estate Law, Securities Regulation, Tax Law
  • In addition, many Nixon Peabody practices received U.S. News/Best Lawyers Tier 1 rankings at the regional level in the following geographies: Albany, NY; Boston; Buffalo; Chicago; Long Island; Los Angeles; Manchester, NH; New York City; Providence, RI; Rochester, NY; San Francisco; and Washington, DC.
  • IAM Patent 1000—The World’s Leading Patent Practitioners—Recommended for patent prosecution and litigation, including seven patent lawyers individually listed (2012–2019)
  • Managing Intellectual Property—Ranked as a top U.S. law firm for securing “the highest-quality patents”; recognized as a national leader in the patent category for life sciences; seven IP attorneys recognized as “IP Stars” (2013–2019)
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