Licensing and Technology Transfer INTELLECTUAL PROPERTY
In-licensing and out-licensing of complex, interrelated and cross-disciplinary technologies are increasingly important elements of our clients’ business strategies. Leveraging technical knowledge, business acumen and legal experience, we structure, prepare and negotiate thousands of licenses and other technology transactions each year, from the perspectives of both the licensor and the licensee. We advise clients on the licensing of technical know-how, trade secrets, patents, trademarks, copyrights and most other forms of intellectual property—relating to computer software, biotechnology and pharmaceuticals, manufacturing designs, digital content and many other technologies. We also have extensive domestic and international experience with software shrink-wrap and click-through agreements, and with strategic collaborations, research transactions and other technology transfers.

Experience

In this area, we have:

  • Assisted Nano-C Corporation in licensing projects involving domestic and foreign companies using fullerene combustion technology
  • Represented Eyetech Pharmaceuticals in its $750 million collaboration and license agreements with Pfizer to develop and commercialize ophthalmic products for the treatment of blindness—a strategic alliance selected by Recombinant Capital for its Breakthrough Alliance Award
  • Identified significant potential licensees and negotiated commercial agreements on behalf of a client with a large patent portfolio in the field of camera image presentation and processing

Publications & News

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December 6, 2013

House Passes Patent Litigation Bill

On December 5, 2013, the House of Representatives passed the Innovation Act (H.R. 3309) (the “Act”) by a vote of 325-91. The Act proposes several changes to the patent litigation system such as enhanced pleading requirements, fee shifting, discovery limits, patent ownership disclosures, and stays of customer suits.

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.

June 13, 2013

Supreme Court Holds Myriad’s "Naturally Occurring" DNA Claims Not Patentable

In a unanimous decision with potentially widespread ramifications, the US Supreme Court held today that “[a] naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring.”

May 13, 2013

A Divided Federal Circuit Affirms CLS Bank, Finding No Patent-Eligible Subject Matter Under 35 U.S.C. § 101

January 7, 2013

Starting a Company? Don't Succumb to These Three Common Legal Issues

An article by Jennifer Berrent, published by VentureBeat.

August 31, 2012

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

July 12, 2012

Who Needs Section 365(n)? New Seventh Circuit Decision Provides Licensees of Bankrupt Trademark Licensors Alternate Grounds for Protecting Their Rights

June 7, 2012

Chambers USA 2012 Final Results Announced

May 8, 2012

The National Law Journal Names WilmerHale to 2012 Intellectual Property Hot List

March 22, 2012

Supreme Court Holds Prometheus Patent Claims Invalid