IP & Technology | Technology Transfer & Licensing


Technology transfer is part of life for IP-rich organisations and businesses, from universities and research institutes to commercial organisations, from start-ups to internationally established corporations.

 

Our expertise

Our decades of experience in acting for a wide range of businesses and organisations, whether they are the transferor or the transferee, have given us the insight into the key commercial and legal issues in transactions.  This enables us to give practical, business-orientated legal advice to achieve the best commercial results and secure the interests of our clients in the most cost-effective way.  

Our clients span a wide range of sectors, from medical devices and biotech to software and consumer technologies.

Our advice includes:

  • assistance in identifying the relevant IP, including assistance in segmenting it so that the transferor client transfers only so much as it receives value for and retains its options in respect of the remainder
  • due diligence for transferee clients in respect of the strength of the IP
  • licence transactions, as licensor or licensee
  • purchase transactions, as seller or buyer


Our experience:

  • acting for university spin-out companies from the initial spin-out process and in-licence of university technology to on going exploitation, development and out-licence of technology
     
  • patent and know-how licensing for an AIM biotech business with US National Institutes of Health and other public organisations and with international pharmaceutical and biotech companies
     
  • R&D and Collaboration Agreements for an LSE-listed scientific instrumentation company
     
  • IP restructuring for an early-stage company to maximise commercialisation potential, involving overlapping IP, corporate and commercial issues
     
  • advising a life-sciences company in taking a two-stage licence from a US company to use the licensed IP for research, with an option to take a production licence, including relevant IP rights, support provisions, warranties, provision for some licence fees to be satisfied by royalties and others by an option to subscribe for shares in our client, and possible cross-licence arrangements

 

 

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