Practice Areas & Industries: Duane Morris LLP


Technology Transactions and Licensing Return to Practice Areas & Industries

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Practice/Industry Group Overview

Attorneys in the Duane Morris Technology Transactions & Licensing practice group assist a wide range of clients with maximizing company value from the intellectual property and technology assets that they own or license from third parties. Drawing on the resources of Duane Morris' Intellectual Property and Corporate practice groups, the attorneys in the group combine the elements of an intellectual property practice with a commercial transactions practice. They are trained in the best practices in these disciplines, enabling them to provide guidance on a wide range of intellectual property and business issues involved in IP licensing and technology matters and transactions.

Attorneys in the group have experience with clients in many industries, such as biotechnology and pharmaceuticals; medical devices; diagnostics; life sciences; healthcare; information technologies, including hardware and software; Internet and e-commerce; telecommunications; video games; entertainment; retail; and financial services. Attorneys in the group work with companies of all sizes at all stages of development, including emerging growth companies, middle-market companies and established vendors of technology goods and services, to partner or sell their IP and technology assets. They also assist clients to in-license or otherwise acquire IP and technology assets, as well as to establish technology service arrangements.

Attorneys in the Technology Transactions & Licensing practice group counsel clients on structuring, negotiating and implementing collaborative and licensing transactions that often have a significant impact on a company's business. With their extensive experience in these types of transactions and knowledge of both sides of contract issues, our attorneys assist clients on establishing the core IP and business terms and structure of the deal. They also act as problem solvers for complex and difficult contract issues. Clients value the ability of the attorneys in the group to manage the deal negotiation process in an effort to maximize speed-to-signing while minimizing legal expenses.

Duane Morris Technology Transaction & Licensing practice group attorneys frequently help clients with regard to:

  • Joint ventures and strategic alliances
  • Collaboration and co-development agreements
  • In-bound and out-bound patent and technology licenses
  • Third-party arrangements with employees and consultants
  • Manufacturing and supply agreements
  • Distribution and reseller arrangements
  • Branding and marketing arrangements
  • Business process outsourcing arrangements
  • Nondisclosure agreements

Attorneys in the group work closely with attorneys in the firm from other practice areas, which are often relevant for technology transactions, such as FDA; antitrust; bankruptcy; export control; government contracting; revenue recognition rules; security interests; and complex, multi-jurisdictional issues relating to privacy and security of information.

In conjunction with deal structuring, attorneys in the group also assist clients with IP due diligence, and their strategic planning and/or open innovation strategies, including assessing and identifying the client's existing intellectual property; advising on protecting this intellectual property and counseling on areas of growth and the potential for licensing; and acquiring and selling intellectual property in order to realize maximum value for the business. For software matters, attorneys in the group advise on open source issues.

Attorneys in the group also assist clients with IP management and audits, including software audits.

Articles Authored by Lawyers at this office:

Keeping Our Tech Love Alive
Eric J. Sinrod, March 30, 2015
We live in a world in which we are bombarded with information data from many sources, and so much around us on the tech landscape is transparent. How, then, do we keep our tech love alive?

9th Circuit Resisting Efforts to Dilute CDA Section 230 ISP Immunity?
Eric J. Sinrod, March 25, 2015
Section 230 of the Communications Decency Act (CDA) generally affords immunity for Internet Service Providers (ISPs) with respect to content posted by users on their websites. There have been various efforts by plaintiffs in lawsuits to chip away at this immunity, most of which have failed. Now...

Smartphones Can Do Anything, Right?
Eric J. Sinrod, March 25, 2015
Once upon a time, frankly not that long ago, a telephone was something that was tethered by a wire to a phone jack and that enabled people to make telephone calls - nothing more. A home had one phone line, and perhaps multiple phones for that line.

Getting Serious About Cybersecurity
Eric J. Sinrod, March 19, 2015
Hack attacks have been in the news for a while. But the most recent headlines seem to indicate that hackers are far outpacing security efforts to contain them.

$195 Million Awarded for Failure to Negotiate in Good Faith; PharmAthene, Inc. v. SIGA Technologies, Inc.
David A. Charapp, March 18, 2015
In 2011, I wrote about the PharmAthene, Inc. v. SIGA Technologies, Inc. case, in which the Delaware Chancery Court found that SIGA Technology Inc. failed to negotiate in good faith with PharmAthene, Inc. for the grant of a license to SIGA’s smallpox drug known as ST-246. This case provided an...

FTC Seeks to Thwart ‘Revenge Porn’
Eric J. Sinrod, March 18, 2015
While the Internet provides many obvious advantages to people in this digital age, it can also enable a dark side for those intent on mischievous and criminal online behavior. “Revenge porn” is part of that dark side.

It’s 2015: The Future Is Here for Legal Tech
Eric J. Sinrod, March 13, 2015
It may be hard to believe, but we already have closed the books on 2014, and we now have started making our legal way into 2015. The year 2015 at first blush sounds futuristic, and in many ways we really are living in the legal tech future we could have barely imagined not that many years ago.