Strategic Alliances, Joint Ventures and Licensing Transactions TRANSACTIONAL

WilmerHale’s technology transactions and licensing lawyers leverage technical knowledge, business acumen and legal experience to structure, prepare and negotiate technology-related agreements. We apply the depth and breadth of our expertise to generate value for our clients. As a result, we were selected by PLC Cross-Border Life Sciences Handbook 2009/10 as a "leading" law firm in the US in Commercial/Partnering.

Our corporate, licensing, intellectual property and regulatory lawyers handled hundreds of licensing, strategic alliance, collaboration, joint venture, product development, outsourcing, manufacturing, distribution and similar agreements. Some of these deals are helping to shape the future of science and technology, and others have received industry recognition for their importance. For example, in four of the last nine years we worked on the biotech strategic alliance chosen by Recombinant Capital for the Breakthrough Alliance Award. Many of these transactions span several countries or continents. Our lawyers in the United States, Europe and Asia work together seamlessly to find the right solution for our clients' business.

Contacts

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Barrett, Steven D.

Steven D. Barrett

Co-Chair, Technology Transactions and Licensing Practice Group

+1 617 526 6238 (t)

steven.barrett@wilmerhale.com

Juran, Belinda M.

Belinda M. Juran

Co-Chair, Technology Transactions and Licensing Practice Group

+1 617 526 6987 (t)

belinda.juran@wilmerhale.com

Bain, Mick

Mick Bain

Partner

+1 617 526 6158 (t)

michael.bain@wilmerhale.com

Boot, Jeannette K.

Jeannette K. Boot

Partner

+1 212 295 6507 (t)

jeannette.boot@wilmerhale.com

Borden, Mark G.

Mark G. Borden

Partner

+1 617 526 6675 (t)

mark.borden@wilmerhale.com

Bothwick, Jay E.

Jay E. Bothwick

Partner

+1 617 526 6526 (t)

jay.bothwick@wilmerhale.com

Braun, Martin

Dr. Martin Braun

Partner

+49 69 27 10 78 207 (t)

martin.braun@wilmerhale.com

Brown, Lillian

Lillian Brown

Partner

+1 202 663 6743 (t)

lillian.brown@wilmerhale.com

Buckland, Peter

Peter Buckland

Partner

+1 650 858 6036 (t)

peter.buckland@wilmerhale.com

Experience

We regularly advise clients across a broad spectrum of industries, including:

  • information technology and electronics
  • biotechnology and pharmaceuticals
  • nanotechnology
  • telecommunications
  • Internet and e-commerce
  • healthcare and medical devices

We represent numerous market leaders in technology and life sciences, including:

  • Biopharmaceutical companies such as Bayer, Millennium Pharmaceuticals and Sepracor
  • Instrument and laboratory sciences companies such as PerkinElmer and Thermo Electron
  • Software companies such as Amdocs, Avid Technology and Red Hat
  • Semiconductor industry companies such as Analog Devices and Varian Semiconductor
  • Suppliers of computer storage and peripheral devices such as EMC and Iomega
  • Enablers of e-commerce such as Akamai Technologies and DoubleClick

Our recent high-technology licensing experience includes:

  • Analog Devices—domestic and international product development, supply, OEM and license agreements
  • Avid—key licensing, distribution and supply agreements for Avid and its Digidesign division
  • IMLogic—collaboration with AOL to provide instant messaging support services to AOL's business customers
  • O2 Germany—strategic agreement with NTT Docomo for mobile Internet service technology
  • Red Hat—establishment of South American distribution channel
  • RSA Security—agreement with Aladdin Knowledge Systems for security token devices
  • SmartBargains—agreements with online merchants for B2C shopping portal
  • Starent Networks—product supply and OEM agreements with major US and European telecom companies

Our recent strategic alliances and collaborations for life sciences companies include:

  • Achillion Pharmaceuticals—collaboration with Gilead Sciences
  • Alnylam Pharmaceuticals—alliance with Novartis for RNA interference therapeutics
  • AVEO Pharmaceuticals—$100 million collaboration with Merck
  • Becton Dickinson—diabetes research and development with Plureon
  • Eyetech Pharmaceuticals—$750 million strategic alliance with Pfizer—winner of 2004 Breakthrough Alliance Award
  • Icagen—collaboration with McNeil
  • Idenix Pharmaceuticals—$862 million strategic alliance with Novartis

Read more about the transactions we've done:

Technology

Information Technology and Electronics

Technology licensing is frequently a core element of our clients’ strategies. We assist clients with hundreds of licenses each year, both from the perspective of the licensor and the licensee, and in nearly every technological field. We routinely advise clients on the licensing of patents, computer software, digital content, technical know-how, trademarks, trade secrets, copyrights and most other forms of intellectual property. We have significant experience in the area of software and content "shrink-wrap” and "click-wrap” agreements, and successfully represented the plaintiff in the landmark case ProCD v. Zeidenberg, in which a federal appeals court held for the first time that shrink-wrap license agreements are enforceable contracts.

We also represent some of the most prominent providers of information technology, systems integration and consulting services. We advise these clients on issues ranging from software and website development agreements to strategic and management re-engineering to the engagement of leading scientific and technical advisors.

In 2005, we represented:

  • Analog Devices in negotiating domestic and international product development, OEM and license agreements
  • Avid Technology in negotiating key licensing, distribution and supply agreements for Avid and its Digidesign division
  • Columbia University in licensing LCD technology to major Asian electronics manufacturers
  • RSA Security in negotiating an agreement with Aladdin Knowledge Systems for security token devices
  • Starent Networks in negotiating international distribution and licensing relationships

Internet and E-commerce

We have deep experience in the legal foundations of e-commerce and regularly counsel clients on critical e-commerce matters such as website development and hosting agreements, liability, privacy, data security and website terms of use. We advise clients in the burgeoning area of application service provider (ASP) arrangements, including third-party application hosting. We monitor legislative and regulatory developments relating to the Internet in the United States, the European Union and elsewhere. Then we leverage this knowledge to advise clients in areas such as data privacy, copyright infringement and export restrictions.

We have negotiated agreements on behalf of several leaders in this industry, including:

  • AOL—various payment processing agreements for online transactions
  • IMLogic—agreements for instant messaging software
  • SmartBargains—online marketing referral agreement with LinkShare

Open Source

Open source software has become increasingly popular among software developers for a variety of reasons. Some developers support the communal philosophy of the open source movement, while others believe that the use of open source software increases the efficiency and quality of software. Information technology personnel within large and small enterprises are attracted to the low cost of obtaining and implementing open source solutions. Although everyone has his or her own definition of open source code, the terms of open source licenses vary greatly. Analyzing the implications of the use of open source code requires a deep understanding of both the technology and the law.

Our TTL attorneys have advised clients on open source issues for years. We advise organizations that are well-known proponents of the open source model, such as Red Hat, as well as proprietary software vendors who need to understand the pros and cons of adopting open source code in their development projects. We also advise chief technology officers and corporate counsel about the use of open source code within their organizations and help them determine whether certain open source code products are right for their needs. During acquisitions, we review the use of open source software and advise companies and investors about the impact of open source software on the technology being acquired and about ways to manage any risk.

Industry Consortia

Sometimes the only way to achieve a goal is for multiple participants to work together. Whether the goal is setting an industry-wide standard, developing a new product that requires more expertise—or involves more expense—than any one company can bear, or providing a service whose output will be dedicated to the public, a consortium or other joint venture among multiple parties might be the best—or the only—way to accomplish that goal.

WilmerHale has developed a comprehensive, interdisciplinary approach to the representation of industry consortia and standards organizations. The central focus of many industry consortia is the combination of resources to develop or advance a technology for the benefit of the group or the public. The agreements governing the development of technology or intellectual property within consortia are critical and often involve complex commercial and technological considerations. Our attorneys, many of whom hold advanced degrees in areas as diverse as computer engineering, physics, molecular biology, chemical engineering and immunology, are experienced in combining legal, commercial and technical expertise to structure and negotiate such arrangements.

Our firm has helped to structure and form numerous industry consortia, representing major public-private and industrial initiatives. We have also advised clients, such as Yahoo!, wishing to join or contribute to standards setting bodies and other broad industry consortia, and have advised companies in forming highly-focused joint ventures.

We have represented numerous clients in the formation and operation of industry consortia in many different disciplines, including:

  • The SNP Consortium Ltd. We were involved in the formation of the SNP Consortium, a not-for-profit collaboration of leading pharmaceutical and bioinformatics companies formed for the purpose of identifying and mapping irregularities in the human genome.
  • Internet Engineering Task Force (IETF). We represent IETF, the leading international Internet standards organization.
  • The Open Software Foundation. We represented this open standards body.
  • SI² Silicon Integration Initiative. We negotiated a license of technology for an electronic design automation industry standardization initiative.

Nanotechnology

Technology is a core asset of our nanotechnology clients. Our lawyers leverage technical knowledge, business acumen and legal experience to structure, prepare and negotiate a range of licenses and other technology transactions. We assist clients with thousands of licensing transactions each year, from the perspective of both the licensor and the licensee and in nearly every technological field. We have significant experience in licensing key technology acquisitions for startups and existing companies. We routinely advise clients on the licensing of patents, copyrights, trademarks, computer software, biological compounds, manufacturing designs, technical know-how, trade secrets and most other forms of intellectual property. We also deal extensively in commercial arrangements relating to technology products and services such as product distribution and sale, contract manufacturing, professional services, technology escrow and business process outsourcing.

Telecommunications 

Licensing transactions and strategic alliances often mean the difference between success and failure in a highly competitive industry. Leveraging technical knowledge, business acumen and legal experience, we structure, negotiate and draft all types of licensing, distribution, product development, joint venture and strategic alliance agreements for telecom and wireless clients. In completing these transactions, we often draw on the experience of our regulatory, intellectual property, business and tax lawyers.

Life Sciences

Biotechnology and Pharmaceuticals

Licensing of patents, trade secrets and other intellectual property and the establishment of strategic alliances are critical aspects of the business of many biotechnology and pharmaceutical companies. We have expertise in structuring these arrangements as well as in the related areas of material transfer agreements, manufacturing and supply agreements, complex confidentiality agreements and distribution agreements. We frequently represent our venture capital clients in licensing patents from leading universities, such as MIT, Harvard Medical School and its affiliated hospitals, Johns Hopkins, and other academic institutions across the United States and Europe, that serve as the foundation of the business of new biotech companies.

We have built a preeminent capability in the strategic alliance area by combining the skills of our licensing lawyers with key input from our FDA group, biotechnology and pharmaceutical patent specialists, and tax, antitrust and EU competition lawyers. For each of the last nine years, Recombinant Capital has given an award for the best and most innovative practices in drafting and negotiating a biotech-pharma alliance. We represented clients in the deals that won the award in four of these years, including both the biotechnology company and the pharmaceutical company in one of these years, and clients in 10 nominated alliances during these years. In 2004, we represented the biotechnology company in three of the five nominees for the award, including:

  • Idenix in its $860 million deal with Novartis in the antiviral field
  • Eyetech Pharmaceuticals in its $770 million deal with Pfizer (the 2004 winner) involving Eyetech’s Macugen treatment for macular degeneration
  • Millennium Pharmaceuticals in its $535 million deal with Ortho Biotech, a Johnson & Johnson company, involving Millennium’s Velcade cancer therapy

More recently, we represented Alnylam in its $700 million collaboration with Novartis for the discovery of therapeutics based on RNAi, Cephalon in its $490 million collaboration with Alkermes for the treatment of alcohol dependence, Idera Pharmaceuticals in its collaboration with Novartis to develop immune modulatory compounds for asthma allergy and AVEO Pharmaceuticals in its alliances with Merck for the discovery of novel cancer drugs.

We have also represented pharmaceutical companies in strategic alliances, including routinely representing Bayer in international joint venture and licensing transactions and representing Wyeth in several alliances with Elan.

Healthcare and Medical Devices

Keeping people healthy requires more than the development of new pharmaceuticals. Similarly, our life sciences practice involves more than the negotiation of collaborations between biotechnology and pharmaceutical companies. Medical devices—used to diagnose and treat patients—are an important component of the medical industry and we proudly represent a number of companies that develop and sell medical devices. We also represent companies that play other roles in the healthcare industry, such as companies that provide services to physicians and to patients.

Because of the breadth and depth of our technology transactions practice, both at the individual attorney and the practice group level, we can quickly and effectively respond to the needs of healthcare and medical device clients who may be entering new markets or engaging in new business models. Whether a client is entering into a clinical trial, distribution, manufacturing, license or services agreement, to name just a few, we can help the client achieve its goals by applying our industry insights, as well as the broad knowledge we've gained from doing such deals for other industries.

Among the clients we have represented are:

  • Aspect Medical Systems, in its alliance with Boston Scientific to develop products for diagnosing and treating neurological diseases
  • Lifeline Systems, in a distribution agreement with Home Technology Systems
  • Omrix Biopharmaceuticals, in a distribution and supply agreement with Johnson & Johnson Wound Management for Quixil fibrin sealant product
  • TargetRx, in various marketing information engagements by major pharmaceutical companies
  • Triple G, in the provision of laboratory information systems and services to major hospital networks

Orange Book Settlements

Pharmaceuticals provide great benefits to patients around the world. Patent laws create incentives for pharmaceutical companies to develop new drugs by providing them with exclusive rights to make, use and sell their drugs for the life of the relevant patent. Yet some patents may not deserve such protection, if they have been improperly obtained or are otherwise invalid, and invalid patents may unreasonably prevent competitors from bringing to market cheaper versions of these drugs. US public policy, through the Hatch-Waxman Act, seeks to achieve a balance between these competing interests by encouraging producers of generic drugs to challenge invalid patents listed in the "Orange Book," the FDA-maintained catalog of patents that each relevant pharmaceutical company has declared cover its approved drugs.

The expense of such patent challenges is extremely high for all parties involved, and the pharmaceutical company and the challenging generic company will often want to avoid further costs by settling the litigation before a final resolution. We have advised a number of pharmaceutical companies in structuring settlement agreements that maintain the validity of the patent while also permitting the generic company to bring a product to market before the expiration of the patent, thereby achieving a win for both parties and the public. Our TTL lawyers work closely with our litigation, intellectual property and antitrust colleagues to achieve the parties' business goals—and society's interests—in a legal manner.

Recognition

  • Practical Law Company (PLC) – In the PLC Cross-Border Life Sciences Handbook 2009/10, WilmerHale is identified as a"leading" law firm in the US in the Commercial/Partnering category. In addition to the firm rankings, the handbook named Steven Barrett, Fred Server and Steven Singer as "leading lawyers" for USA Commercial/Partnering, as well as Steven Singer and David Redlick for USA Corporate work.

Publications & News

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August 28, 2014

LMG Life Sciences Honors Firm, Attorneys with Top Rankings for Third Consecutive Year

The 2014 edition of LMG Life Sciences has been released, and it includes the recognition of nine WilmerHale practice areas and 17 attorneys.

May 14, 2014

WilmerHale Named Among America’s Top Corporate Law Firms

WilmerHale has been named to NYSE Governance Services and FTI Consulting’s “America’s Top Corporate Law Firms,” a comprehensive ranking of the top 25 firms in the nation.

May 6, 2014

2014 Corporate Reports

WilmerHale’s annual IPO, Venture Capital and M&A Reports provide comprehensive statistics and analysis that are hard to find elsewhere.

April 25, 2014

Selected 2014 Life Sciences Transactions

Recognized both globally and nationally as a leading life sciences practice, WilmerHale has four decades of experience representing biotechnology, pharmaceutical and medical device companies at all stages of growth, as well as venture capitalists and investment banks.

April 25, 2014

Selected 2014 Strategic Alliances, Joint Venture and Licensing Transactions

Our corporate, licensing, intellectual property and regulatory lawyers have recently handled numerous strategic alliance, joint venture, licensing, collaboration, product development, outsourcing, manufacturing, distribution and similar agreements, including many significant deals that are helping to shape the future of science and technology.

November 1, 2013

WilmerHale Among U.S. News – Best Lawyers® “Best Law Firms” and Again Named International Arbitration “Law Firm of the Year”

The 2014 edition of the U.S. News – Best Lawyers® “Best Law Firms” list names WilmerHale as “Law Firm of the Year” in International Arbitration—this is the second consecutive year that the firm has won this honor—and honors WilmerHale as a first-tier law firm in 27 national and 60 metro-area rankings.

April 17, 2013

Selected 2013 Life Sciences Transactions

Recognized both globally and nationally as a leading life sciences practice, WilmerHale has four decades of experience representing biotechnology, pharmaceutical and medical device companies at all stages of growth, as well as venture capitalists and investment banks.

April 17, 2013

Selected 2013 Strategic Alliances, Joint Venture and Licensing Transactions

In 2013, our corporate, licensing, intellectual property and regulatory lawyers handled numerous strategic alliance, joint venture, licensing, collaboration, product development, outsourcing, manufacturing, distribution and similar agreements, including many significant deals that are helping to shape the future of science and technology.

March 14, 2013

WilmerHale Earns Top Rankings in BioPharm Insight’s 2012 League Tables

BioPharm Insight’s 2012 Licensing League Tables ranks WilmerHale as the leading legal advisor in its global and North America volume tables and lists the firm in fourth place in its global and North America value tables.

August 31, 2012

The 2013 Best Lawyers in America® List Includes 101 WilmerHale Lawyers