Licensing and Technology Transfer

Licensing and Technology Transfer

In-depth industry knowledge, wide-ranging IP experience and effective negotiation skills focused on maximizing business growth

Licensing and acquisition of intellectual property assets are not limited to high-tech companies — these can be effective business strategies for virtually any enterprise that owns intellectual property. The lawyers of Hunton & Williams LLP's licensing and technology transfer practice have extensive experience structuring, negotiating and implementing agreements that enable developers and users alike to maximize the value and usefulness of creative assets. We are particularly skilled in the design and delivery of sophisticated legal solutions that help clients manage complex IP transactions and portfolios.

We understand the needs of clients from the inside out, from the generation, acquisition, administration and protection of IP assets to their licensing and monetization, by addressing emerging challenges such as open-source technology and the increased use of consultants and contractors. In addition to their years in private practice, several of our partners and senior counsel have held senior management positions — including serving as chief intellectual property counsel and as leaders in the offices of general counsel — in some of the world's largest and most highly-complex technology corporations. We understand the relevant legal issues, the essential contract terms, the scope of the intellectual property rights being conveyed, and our clients' business objectives. We also understand the technology itself — many of our lawyers hold undergraduate and graduate degrees in scientific and engineering disciplines.

Our lawyers routinely advise clients on all forms of IP transactions and their implementing agreements, including patent and technology license agreements, joint development agreements, procurement agreements, software licenses, trademark licenses, joint venture and other commercialization agreements, development and supply agreements, nondisclosure agreements and IP security agreements. Whether helping in-house legal departments identify, stimulate, protect and manage internal IP programs, or drafting and negotiating mission-critical, multiparty IP-based agreements, we apply all the well-honed resources and hands-on experience of our full-service firm to address client matters. Since IP issues often overlap with other business and regulatory concerns, we take full advantage of the experience of firm lawyers in related areas such as antitrust, Food and Drug Administration, bankruptcy, and tax law, as well as litigation.

In conjunction with our corporate team, our lawyers frequently handle the IP aspects of mergers and acquisitions. We conduct IP due diligence investigations to understand and advise clients about the quality of IP assets and their relevance to the business, the level of IP infringement risk, and the nature of any relevant IP agreements. We also work closely with the client and the corporate team to draft and negotiate IP-related provisions in deal documents, including asset purchase agreements, stock purchase agreements, merger agreements, joint venture agreements and other intellectual property agreements that ensure the purchaser has all the necessary IP to run the acquired business.

We have successfully represented clients in IP transactions involving medical devices, pharmaceuticals, telecommunications, consumer products, software, electronics, biotechnology, financial services and industrial equipment, among other industries. We work closely with clients to ensure that their IP strategy is fully integrated with their business and legal goals, including the use of alternative fee arrangements for monetization of IP assets, to help manage legal expenses related to tactical, day-to-day issues as well as strategic long-term planning initiatives.