Licensing and other technology transfers represent a critical component of any comprehensive intellectual property rights management program. These transactions can generate significant economic value and other competitive advantages when effectively structured and executed.

Our broad base of clients frequently acquires rights to use third party-owned intellectual property assets and monetize their own intellectual property assets in a variety of business and other contexts. Our clients rely on Goodwin Procter’s Licensing Practice to effectively and efficiently structure and implement licensing and technology transfer transactions and strategies – and manage corresponding legal risks. We take great pride in consistently helping our clients to successfully achieve short-term and long-term business goals that drive licensing deals. 

We have extensive experience evaluating, structuring, drafting and negotiating licenses and other technology transfer transactions involving all types of technology covered by patents, copyrights, trade secrets and other intellectual property based in U.S. and foreign jurisdictions. Our recent and historic licensing and technology transfer work covers a wide variety of transactional and strategic contexts arising in the business, university, government and not-for-profit sectors. The depth and breadth of our experience ranges from “basic” patent, technology, trademark and software licenses to highly complex joint development and collaboration agreements. Other examples of licensing and technology transactions we regularly structure and execute include:

• Joint venture, strategic alliance and collaboration agreements

• Distribution agreements (including, original equipment manufacturing agreements)

• Traditional and “value-added” reseller agreements

• Manufacturing agreements

• Supply agreements

• Hardware and software system purchase agreements

• Application service provider and software subscription agreements

• Research and development agreements

Attorneys in our Licensing Practice have deep knowledge of and are proficient with a broad spectrum of technology. They are dedicated professionals who continuously strive to increase their knowledge base and stay on the cutting-edge technological developments. Our attorneys are also skilled practitioners who have a firm understanding of the relevant business, intellectual property and other legal issues. They are effective communicators and creative problem solvers. Our attorneys are well versed in the “best practices” for various types of licensing transactions and strategies. Each member of the Licensing Practice is committed to collaborating with each client and thoughtfully applying his or her knowledge and skill set using a pragmatic, results-oriented approach.

Contacts: Stephen G. Charkoudian and Ira J. Levy