Providing valuable, practical and sophisticated counsel
Our Licensing & Strategic Alliances group handles a large volume and variety of transactions each year. Our work with clients ranges from simple software license agreements to complex, multi-party, international joint ventures.
We regularly advise our clients on transactions in a broad area of technologies, including software, Internet, computer hardware, manufacturing, medical devices and biotechnology. We also counsel clients on a wide range of matters, including structuring, negotiating and drafting research agreements, development agreements, commercialization agreements, manufacturing and supply agreements, marketing and distribution agreements, technology escrow agreements, end-user agreements, ASP agreements, confidentiality agreements, material-transfer agreements, and other technology-transfer and license agreements.
With more than 25 lawyers devoting a substantial portion of their practice to licensing & strategic alliance transactions, we can help you with your most complicated matters. Many of the lawyers in our group have technical backgrounds and experience prosecuting patents. In addition, Foley Hoag’s extensive Intellectual Property practice is seamlessly integrated with our Licensing & Strategic Alliances practice, further enabling us to provide our clients with valuable, practical, and sophisticated advice on how to best structure license agreements to protect and enhance existing intellectual property portfolios.
Representative Experience
Biotech, Life Sciences and Medical Devices
- Prepared numerous sponsored-research agreements between biotechnology and other companies, universities and not-for-profit institutions. In these arrangements, we work with our clients and the licensing university to arrange for a suitable disposition of the ownership of new inventions and commercialization rights. We have negotiated several of these agreements on behalf of our clients. In addition, we have negotiated several such agreements with foreign universities and research institutions.
- Helped a faculty member at a major teaching hospital in licensing his patent applications to a major medical device manufacturer. We prepared the patent applications for him after working to negotiate with his employer hospital, his medical school and the parent university to ensure that he had sole ownership of the inventions in question.
- Represented a proteomics and drug discovery company in connection with a research, development and commercialization collaboration with a company possessing human antibody technology. The collaboration involves the development and commercialization of human antibodies directed against more than 100 different protein targets. The agreement provided for, among other things, a picking mechanism for targets, ownership of collaboration inventions and commercialization rights for both parties. In this representation, we assisted our client in devising a number of business and legal mechanisms for prioritizing the different protein targets, maintaining commercialization rights in certain fields for our client, and for protection against claims of intellectual property infringement. We are continuing to assist this client with its other partnerships.
- Acted as counsel for a genetics testing company in connection with domestic and international licensing of patented technologies to detect human susceptibility to genetically influenced disease. This representation entailed advising the client on the revamping of its U.S. marketing and supply relationships, as well as the termination of a previous European distribution contract and the preparation of a broader license agreement with a potential new European partner. We worked actively with our client to develop a licensing strategy that takes into account its business goals and intellectual property position. We also participated in negotiations with various contractual partners. In this representation, we have drawn on both our licensing expertise and our familiarity with the client’s patent portfolio, for which we are also responsible.
- Represented a proteomics company in connection with a development and commercialization collaboration with a leading supplier of mass spectrometers and supplies. The collaboration envisions the development of new technology in the field and provides for preferred purchasing terms for our client.
- Assisted a Canadian proteomics and drug discovery company in the establishment of its first proteomics research facility in the United States. The new facility is closely tied to a prominent U.S. academic research institution. The facility will enable the company to further develop and market its proteomics methodologies both in the United States and internationally. We negotiated a license to existing and future proteomics methodology from the academic institution, consulting agreements with two of its prominent scientists, and related agreements with the university and employees.
- Represented a medical device client in preparing their standard medical device lease agreement. The device at issue was a needle-free suturing device that can be used in laproscopic gastric bypass surgery.
- Represented a prominent scientist from a leading U.S. medical school in connection with his receipt of stock and a consulting agreement with a California-based biotechnology company.
Software, Hardware and eCommerce
- Represented an Internet company concerned with collection and dissemination of pricing information from corporate formation, through venture capital financing, with multiple content licensing agreements. The work concluded with the client’s sale to another company.
- Provided counsel to a publicly traded maker of data storage equipment in developing and commercializing its next generation storage product. The work involved drafting and negotiating letters of intent and development agreements with six manufacturers of data storage medium, five of whom are Japanese. Subsequent agreements involved equipment sale agreements and tooling agreements with all six companies. In addition, we assisted our client in designing and implementing a basic order and procurement agreement for the company, allowing it to obtain parts to manufacture data storage equipment on a just-in-time basis from several OEMs.
- Represented a leading telecommunications company listed in the Fortune 25 in connection with the divestiture of a business line as part of a merger with another company. Our work entailed assisting with intellectual property agreements between the telecommunications company and the divested business, including software license, transition services, cross-license and project participation agreements.
- Assisted a prestigious Boston-based hospital in negotiating a collaboration for the webcasting of certain of its grand rounds. The collaboration involves the production, marketing, sales and distribution of the grand rounds, with special attention focused on compliance with privacy laws and regulations.
- Represent a software company specializing in data visualization and query tools for use in applications ranging from drug discovery to biotechnology. We advised our client in connection with domestic and international software distribution and bundling agreements, enterprise license agreements, shareware license agreements, joint marketing agreements and partnering agreements.
- Advised Internet and software companies in multiple transactions with several nationally recognized portal companies, including integration and promotion, co-branding, content and other service agreements. Several of the transactions included debt and equity financing for our clients.
- Advised software companies on implementing access service provider (ASP) business models, including drafting company standard form ASP agreements and negotiating ASP agreements.
- Prepared customized terms and conditions of use and privacy policies for Web sites. This allowed us to leverage our extensive knowledge and experience in addressing privacy issues arising out of the Children’s On-Line Privacy Protection Act, Gramm-Leach-Bliley Act, Health Insurance Portability and Accountability Act (HIPPA), Federal Trade Commission actions, European Union Directive 95/46/EC on the protection of personal data, and other laws, regulations, and enforcement actions.
- Represented a big five accounting firm in negotiating multiple webcasting agreements. We worked closely with our client to address their intellectual property, privacy, customer relations, and quality-control concerns in the final agreement.
- Assisted various software companies based in Europe in the preparation of license and distribution agreements for the licensing and distribution of software products in the United States. We also advised our clients on intellectual property and tax strategies in connection with licensing software in the United States.
- Advised a U.S.-based software company with subsidiaries in Europe, Asia and Australia on international transfer pricing strategy. We also assisted the company in the implementation of the strategy through various technology-transfer and licensing agreements.
- Represent a U.S. software company in preparing license and distribution agreements for distributing its computer aided design (CAD) software in over 20 countries in Europe, Asia and Latin America.
