Practice Areas & Industries: Sutherland Asbill & Brennan LLP


IP Licensing and Transfer Return to Practice Areas & Industries

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Practice/Industry Group Overview

Sutherland IP licensing and transfer attorneys help clients pursue strategic acquisitions that bolster IP portfolios to achieve business objectives.

With patent litigation and damages on the rise, companies realize that strategic investments in intellectual property can provide significant competitive advantages. Through targeted IP acquisitions, a business may fill gaps in its existing portfolio, protect current and future technology from the threat of litigation, differentiate existing product and service offerings or hinder competitors’ initiatives. Sutherland’s Intellectual Property Practice Group advises clients on IP acquisitions, licensing and transfers, to guide them in protecting their existing IP and building their current platform. We support clients throughout the life of a transaction, from developing and evaluating acquisition targets and strategies to integrating and managing newly acquired IP and enforcing IP rights.

Through strategic acquisitions of patent portfolios and mergers with and acquisitions of businesses with valuable intellectual property, we help our clients maximize portfolio value and achieve business goals. We represent a range of clients in technology-based transactions, including Fortune 500 companies, rapidly growing small and mid-size companies, start-ups, cooperatives and educational institutes and associations. Our clients engage in a variety of different corporate transactions in many different business sectors and technologies.

Our team understands that there is no one-size-fits-all approach to technology sector transactions. We focus on our clients’ commercial objectives to maximize protection, build assets, protect markets and develop income streams for patentees, their investors, licensees and business partners. We are adept at engaging clients to identify the best use of resources to achieve the most favorable outcome. Our skilled prosecution team can set up and maintain any patent and trademark programs that result from transactions.

Why Sutherland
Technical know-how.
Sutherland’s Intellectual Property Practice Group includes approximately 30 attorneys, most of whom are registered patent attorneys. A large number of our IP lawyers hold specialized and advanced degrees in electrical engineering, computer engineering, mechanical engineering, chemical engineering, chemistry, molecular genetics, medicine and other scientific disciplines.

Strength of an entire firm. Intellectual property transactions can encompass a wide range of issues, such as tax, securities, antitrust, employment, environmental, intellectual property and others, as well as the special issues raised by transnational transactions. Our IP attorneys draw on the knowledge and experience of our 400-plus lawyer firm to address the full range of issues our clients may encounter.

Business perspective. Our attorneys listen carefully to our clients, so we understand their goals and how IP licenses and transfers can positively impact the bottom line. We frequently begin advising at the very early stages of a transaction, beginning with the identification of potential targets or buyers, and we work closely with our clients throughout the life of the transaction.

Broad industry experience. Our clients range from biomedical device inventors to financial services firms to manufacturing companies, so we understand the needs of a variety of industries.

Full service. Our attorneys provide the full range of IP services. We assist clients with patent prosecution, validity analysis, litigation and counseling; freedom-to-practice opinions and patent infringement strategic counseling; technology sharing, transfer, licensing and other cooperative commercialization agreements; trademark prosecution, counseling and litigation; trade secret and technology counseling and litigation; due diligence reviews in connection with mergers and acquisitions; and intellectual property audits and evaluations.

Team approach. At Sutherland, we recognize that effective collaboration with our clients’ other advisers increases our own value. We work closely with our clients’ investment advisers, accountants and consulting firms to best meet each client’s needs.

Nuts and Bolts
Sutherland provides a full range of intellectual property transaction services, including:

  • Analyzing portfolios of potential targets
  • Performing due diligence reviews
  • Preparing freedom-to-practice opinions
  • Drafting and negotiating joint development and joint collaboration agreements
  • Drafting and negotiating IP acquisition agreements
  • Preparing post-closing and transitional services agreements
  • Advising on integrating acquired IP into the client’s existing portfolio
  • Advising on strategies for monetizing an existing or expanded IP portfolio
  • Preparing technology transfer, licensing and other cooperative commercialization agreements
  • Enforcing patent rights, including through litigation

Take Action
Clients turn to Sutherland when they need technical and industry knowledge, coupled with broad intellectual property experience, to develop and support effective IP transactions, licensing and transfer arrangements.

Selected Experience
Sutherland represents Siemens Energy in complicated license and development agreement.
Our attorneys represented one of the world’s largest energy technology companies in a complex collaborative technology license and development agreement related to advancing state-of-the-art gas turbine performance.

Sutherland counsels major payment processing service provider on ongoing transactional issues.
We guide a leading payment processing service and financial services technology provider through mitigating third-party patent issues and in IP transactional matters relating to IP licenses and M&A transactions.

Sutherland advises Printpack on IP agreements.
Sutherland advises a major converter of flexible and specialty rigid packaging in numerous IP and manufacturing and supply agreements.