Technology, Licensing + IP Transactions

Intellectual property is the cornerstone of competitive advantage. And companies sophisticated enough to go beyond applications and enforcement position themselves for the greatest gains from their IP assets.

In addition to its deep technical knowledge and effectiveness in patent and trademark preparation and prosecution, Patterson + Sheridan has the knowledge and resources to effectively manage all aspects of a company’s IP portfolio.

From drafting collaboration agreements to IP due diligence and litigation, our team has years of combined experience to power our clients’ patent and agreement strategies.

Our well-rounded approach to value creation places emphasis on drafting and managing a wide range of IP-focused agreements to ensure proper scoping, background IP checks and a managed approach to handling confidential information. 

Confidentiality Agreements

Whether presenting inventions to investors, pursuing technology development partners, or obtaining estimates from potential suppliers, non-disclosure and other confidentiality agreements must be in place before any conversations begin. We leverage deep industry and IP knowledge to help clients protect their IP assets before, during, and after the agreement term. Our process includes:

  • Scoping agreements to define everything from term length to handling information after termination
  • Capturing new inventions properly to ensure ownership rights are clearly outlined
  • Counseling clients to prevent conflicting agreements
  • Docketing critical deadlines such as the confidentiality term and agreement term
  • Ensuring proper treatment of confidential information
  • Monitoring public disclosures (such as patent publications) made by the other party

Joint Development, Technology Collaboration and Alliance Agreements

Balancing innovation and collaboration are key to being competitive in today’s marketplace. But entering into agreements with other IP partners also poses risk. The Patterson + Sheridan team is experienced in helping clients maximize the gains of collaborating with outside parties while protecting their best interests through proactive research, thorough documentation and ongoing monitoring. Our services include:

  • Running background IP checks on a potential partner’s current portfolio to search for conflicts and clearly define who owns what upon entering the agreement
  • Developing proactive filing strategies before entering an agreement
  • Creating trademark strategies for collaborative offerings
  • Drafting trademark licenses
  • Capturing new inventions and properly docketing it to clearly define ownership and record all relevant deadlines
  • Documenting the treatment of confidential information to help maintain control over trade secrets and other IP
  • Monitoring a collaborative partner’s publications, such as patent publications, to identify any potential conflicts throughout the term of the agreement and beyond

Opinions and Counseling

We render hundreds of opinions on the strength and coverage of IP assets every year, ranging from a single opinion on a specific patent to providing long-term, ongoing counseling on complex patent portfolios and litigation. We routinely address:

  • Patentability, infringement, and validity
  • Freedom-to-operate analyses
  • Design-around issues
  • Licensing potential
  • IP contract construction and enforcement
  • Export controls

We partner with our clients’ legal, business, and technical professionals to identify the potential for risk and reward throughout their patent portfolios. In addition to transactional counseling, we regularly advise clients on pre-litigation strategies, guiding them to favorable settlements before or during litigation.

We advise companies seeking to leverage their competitive advantage in IP on licensing, technology transfers, and other agreements, from simple licenses to complex strategic alliances. We provide protection and guidance throughout the process, from negotiation to enforcement.

Licensing Agreements and Programs

Licensing agreements can vary widely in scope – from exclusive to limited use to nonexclusive – and having a clearly defined license scope is key for enforcing the terms to meet the business objectives. Our licensing services include:

  • Conducting thorough candidate and target portfolio reviews to determine current IP assets and identify potential risks or pitfalls
  • Develop licensing strategies in line with the business objectives and facilitate execution of Licensing Programs
  • Drafting and negotiating license agreements that clearly define relevant terms, including termination provisions, proper definition of licensed technologies, clearly defined royalty triggers, handling of confidential information, and rights to enforce
  • Managing license agreements by keeping a watchful eye on every aspect of the agreement including:
    • Royalty payments
    • Audit alerts
    • License term monitoring
    • Licensee patent publication

Strategic Supplier Agreements

Suppliers have their own agendas, portfolios and priorities. Before entering into an agreement with one, be sure you’ve done your due diligence. Our team has experience helping clients proactively research potential suppliers on the front end, setting them up for smoother supplier relations. Our services include:

  • Conducting target supplier IP reviews to help you reserve the right to find an alternate provider
  • Performing alternate source IP reviews to help mitigate any future delays in production
  • Monitoring a supplier’s new IP applications in search of breaches and conflicts
  • Ensuring agreements include proper IP indemnification clauses specifying how each party would compensate the other in the event of harm liability or loss

In addition to drafting these agreements to protect our clients’ interests, we can also manage the entire suite of IP agreements, removing the burden from busy clients with hundreds or even thousands of agreements in place worldwide. 

Due Diligence

Due diligence is critical for companies engaged in mergers and acquisitions, when negotiating or licensing a franchise agreement or when buying or selling patents or other types of IP. We conduct:

  • Early phase, preliminary reviews of target IP
  • Early phase confidentiality agreement scoping to avoid tainting
  • Full IP due diligence review
    • Patent portfolio review
    • Trademark portfolio review
    • IP-based agreement review
    • IP enforcement review
  • IP asset transfer agreements

We routinely conduct investigations to determine the validity of ownership rights, the quality of the assets and the limitations or risks associated with them.

Strategic Guidance and Planning

We also counsel clients on a wide range of issues related to the strength of their IP assets. Whether it’s a single opinion or ongoing guidance for long-term and complex issues, we also help clients with:

  • Patentability, infringement and validity
  • Freedom-to-operate analyses
  • Design-around issues
  • IP contract construction and enforcement
  • Export controls

Code Clearance and Open-Source Counseling

We counsel clients on open source issues for software development and licensing of open source code. Our services include: 

  • Open-source license conflict analysis
  • Software pedigree review
  • Software license compliance audits
  • Risk mitigation counseling such as dual licensing and clean-room development
  • Open-source policies and training programs
  • Licensing source code under open-source licenses