Technology TransferService Area + Legal PracticesOur counsel in the specific area of technology transfer is a core component of our overall technology commercialization capabilities.

Our counsel in the specific area of technology transfer is a core component of our overall technology commercialization capabilities.  We provide experienced technology transfer support to two broad groups:

  • Universities, hospitals and research institutions seeking to monetize or otherwise develop technology assets; and
  • Entrepreneurs, venture capital firms and larger companies seeking to identify and generate returns from these assets.

Our services are designed to meet both strategic and transactional needs, including guidance and support on research transactions, technology licensing, joint ventures, equity transactions, and – for institutional clients – building and improving technology transfer operations.

Institutional clients range from entities with limited research technology portfolios and licensing experience to large institutions with established in-house technology transfer teams.  Our strength is in our ability to support clients at any point in the spectrum:

  • For clients with limited technology transfer experience, we act as an extension of in-house counsel, helping them to understand the risks and opportunities of different approaches to commercialization, and structuring and negotiating transactions on their behalf
  • For clients with more significant technology transfer experience, we provide experienced transactional support to the in-house team on key projects, and are frequently called on to help technology transfer teams improve operational effectiveness and efficiency

Our entrepreneur and investor clients seek our assistance in structuring and negotiating research collaborations and licensing transactions, which often involve equity components.

Chris Wright leads our work in technology transfer, with support from other attorneys in our business and tax service areas.

Equity Transactions

Universities, hospitals and research institutions are becoming increasingly active in taking direct equity stakes in new ventures arising from their licensing, research and joint venture activities.  We counsel universities, investors and entrepreneurs in the formation, tax, governance, investment, financing and exit considerations of these private equity transactions.

Joint Ventures

We counsel our nonprofit and commercial clients in the formation, tax, governance, intellectual property and operational considerations in connection with their contractual collaborations and entity-based joint ventures. Our experience with joint ventures spans more than 10 industries, a wide range of business circumstances, and includes both domestic and international entities.

Operations

In addition to our transactional advice, we counsel universities, hospitals and research institutions in various aspects of the operation of their technology transfer functions.  This work includes drafting or updating intellectual property policies, developing simpler form documents, training staff on closing deals and license maintenance, and helping to build other processes to streamline transactions.

Research Transactions

We help structure traditional sponsored research transactions as well as more complex research collaborations, including those which involve both nonprofit and for profit entities.  We also counsel healthcare clients on clinical trial arrangements.

Technology Licensing

We provide counsel in all aspects of licensing transactions arising from technology transfer. Typical transactions include outbound licenses to patents, copyrights, know-how and/or trademarks, and Inter-Institutional Agreements. We frequently advise our institutional clients on the structuring and strategy of accepting equity as partial or full consideration for a license. We also represent entrepreneur and investor clients seeking to access technology transfer assets through licensing arrangements.