Technology Transfer & Licensing

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. The campaign includes litigation before the U.S. International Trade Commission, the U.S. District Courts for the Central District of California and Eastern District of New York, and the Patent Trial and Appeal Board at the U.S. Patent and Trademark Office.
• 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.