Practice Areas & Industries: Edwards Wildman Palmer LLP


Licensing, Collaborations, Joint Ventures & Strategic Alliances Return to Practice Areas & Industries

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Practice/Industry Group Overview

Our Experience

Edwards Wildman advises business organizations as well as universities, medical centers and research institutions worldwide on a wide array of transactions involving licensing, collaborations, strategic alliances, software development, information technology, outsourcing and technology transfer, including

  • in-licensing and protection of core technology
  • out-licensing and commercialization of core and non-core technology
  • product development, manufacturing, supply and commercialization
  • technology and material transfer
  • clinical trials
  • research services
  • trademark and copyright licensing

Life Sciences

We are leaders in the life sciences industry. Our clients rely on our industry-specific and substantial depth of experience to efficiently structure and successfully complete complex transactions. The advantages our attorneys bring to our clients include:

  • relevant life sciences experience including biotech, pharmaceutical, medtech, diagnostics and healthcare.
  • experience drafting and negotiating licensing, collaboration, strategic alliance and joint venture arrangements.
  • cross-border experience.
  • experience drafting and interpreting institutional policies.
  • integrated cross-disciplinary teams with expertise in patent law, corporate and securities law, tax law, international law, and regulatory compliance.

Corporate Collaborations, Joint Ventures and Strategic Alliances

Our commercial life science clients range from large multi-national pharmaceutical companies to emerging biotech start-ups. We advise our life sciences clients on a broad range of strategic transactions and issues relating to technology, licensing, corporate collaborations and strategic partnering arrangements including:

  • structuring and negotiating product development partnerships among pharmaceutical, biotech and medtech companies
  • implementing technology access strategies and agreements
  • accessing technologies from universities, research institutions and medical centers
  • navigating the IP landscape of leading edge technologies including genomics, proteomics, RNAi, monoclonal antibodies and pharmacogenomics
  • evaluating and resolving technology ownership disputes
  • performing transaction due diligence
  • advising on regulatory compliance and related issues

Commercial life sciences clients for whom we have negotiated license and collaboration agreements include:

  • Advanced Vision Research, Inc.
  • Bayer AG
  • EnVivo Pharmaceuticals, Inc. Genzyme Corporation
  • Euroscreen SA
  • Jolife AB
  • Neovacs SA
  • Novartis BioVentures Ltd
  • Prosensa Therapeutics BV
  • Purdue Pharma
  • Santhera Pharmaceuticals Holding AG
  • Sekisui Diagnostics, LLC
  • Spectrum Pharmaceuticals, Inc.
  • Stemline Therapeutics, Inc.
  • Takeda Pharmaceutical Company Limited
  • ViraCor-IBT Laboratories
  • WILEX Inc.

Institutional Licensing and Technology Transfer

We have extensive experience in technology transfer and intellectual property matters for universities, medical centers and research institutions. We regularly negotiate license agreements, sponsored research agreements, material transfer agreements, clinical trial agreements, consortium arrangements, consulting agreements between faculty members and commercial entities, and many other arrangements with academic research institutions and with governmental entities, both on behalf of such institutions or on behalf of commercial parties seeking to establish such arrangements.

As outside counsel to our institutional clients, we have drafted and advised on the interpretation of institutional polices dealing with intellectual property ownership and transfer, conflicts of interest and conflicts of commitment. We have participated in the approval process of institutional policies, as well as institutional agreement templates to ensure compliance with applicable rules on conflicts. In so doing, our attorneys have served as members of medical center technology transfer committees as well as committees governing research conflicts of interest.

We are thoroughly familiar with the relevant U.S. Governmental statutes and regulations affecting technology transfer, including the Bayh-Dole Act and the National Institutes of Health regulations and policies. We are also familiar with Governmental and institutional policies governing research conflicts of interest.

In addition to our work on behalf of research institutions, we regularly represent companies in negotiations with research institutions for licenses, clinical trials, manufacturing and other forms of collaboration arrangements, so we understand the points of view of both the research organizations and of the commercial entities seeking to exploit the results of research. We are able to work quickly and efficiently in obtaining the broadest possible rights to technology from institutions, while ensuring such rights are consistent with the academic and legal regimes under which the institutions operate.

We are familiar with the most recent trends in collaborations between pharmaceutical companies and research institutions, and addressing the challenging issues they raise, including: the companies' desire to work side by side with institutional researchers, sometimes at the companies’ sites; and contractually mandated joint ownership of inventions arising from the collaboration.

Institutions for whom we have drafted policies and form agreements or otherwise negotiated licensing transactions include:

  • Albert Einstein College of Medicine of The Yeshiva University
  • Beth Israel Deaconess Medical Center
  • Boston Biomedical Research Institute
  • Dartmouth College
  • Fondation Leducq (France)
  • Georgetown University
  • Partners Healthcare
  • Immune Disease Institute
  • Massachusetts General Hospital 
  • Northeastern University
  • University of Bergen (Norway)
  • University of Florida
  • University of Massachusetts
  • University of South Florida
  • University of Vermont

Information Technology

We advise developers of software and licensees of software in a wide variety licensing, software as a service (SaaS), and software hosting transactions, including for complex software, search engines, manufacturing software, financial software packages, and video game software, and advising clients on the use of open source software.

IT & Outsourcing
A properly structured, negotiated and documented IT or outsourcing transaction can generate substantial cost savings and non-financial benefits for business, including improved service quality and operations. Edwards Wildman guides clients through the legal issues associated with outsourcing emerging technologies and helps them leverage new opportunities. We have advised businesses in the US, Europe and Asia on numerous IT and outsourcing deals, including large, highly complex cross-border transactions involving information technology.

Both buyers and sellers seek our counsel, and our attorneys understand the issues on both sides of the table. We are experienced in negotiating electronic data interchange and integration agreements that enable clients to maintain the viability of their relationships with suppliers and customers seamlessly. Combined with our extensive industry knowledge, we are able to provide effective and efficient representation in every engagement.

Software and technology clients for whom we have negotiated license, collaboration, development, SaaS, ecommerce, colocation, or outsourcing agreements include:

Cervalis LLC
Delphi Technology, Inc.
Fortune Brands
General Mitchell International Airport (Milwaukee) S.A.
Hyatt Hotels
Hyundai Capital America
KIA Motors America
Orbitz Worldwide
Parametric Technologies Corporation
PatientsLikeMe, Inc.
RAND Worldwide, Inc.
Related Industries
Simcorp USA Inc.
The Mathworks, Inc.
WMS Gaming.

We negotiate licensing and cross-licensing deals to leverage intellectual property rights to maximize the value of a client’s core technology. Our experience includes deals involving semiconductors and chemical components used to produce them, specialty polymers and polymer-inorganic composites, fuel cell technology, and small molecules.

Articles Authored by Lawyers at this office:

Courts Weigh in on NSA Bulk Telephony Metadata Program
Lawrence R. Freedman,Ari Z. Moskowitz, January 07, 2014
In December, two federal courts weighed in on the NSA’s bulk telephony metadata collection program, under which the agency collects from U.S.-based telephone companies, and stores, the metadata of telephone calls - such as numbers dialed and received and the length of calls. The courts came...

SBA Issues Proposed Rule Permitting SBICs to Invest in Double Holding Companies
Christopher J. Douglass,Alan B. Roth,Michael R. Wilson, January 03, 2014
On December 23, 2013, the U.S. Small Business Administration (“SBA”) issued a proposed rule to revise the Small Business Investment Company (“SBIC”) regulations regarding investments in passive businesses and the use of double holding companies in structuring SBIC...