Licensing & Technology Transfer
There are a variety of situations in which a licensing or technology transfer agreement may be needed. The IP at issue may be inventions, trade secrets, trademarks, and/or copyrights. You may want to license or sell your IP to another party for a royalty or a flat fee, or you may want to license or buy another party’s IP. Or you may be planning to work with another party in a joint venture or other cooperative arrangement in which one or both parties’ IP is being used, developed, or modified.
In every case, there are a multitude of potential issues and landmines that must be navigated carefully while staying within a budget and keeping the deal on track. Multiple rounds of negotiation may be required if the parties are sophisticated and are pursuing and protecting their interests aggressively. I have had extensive experience drafting and negotiating licensing and technology transfer agreements throughout all phases of my career, in many cases with large and sophisticated companies, universities, and governmental agencies.
Though each situation is different, this work can often be done on a flat fee basis. Typically this is on a task-by- task basis, for example for the first draft and then for each subsequent round of revisions of an agreement.