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Technology Transactions & Licensing

Navigating the crossroads of business and intellectual property law requires the ability to extract and maximize IP value through thoughtful, innovative solutions. Miles & Stockbridge helps clients across industries and technologies leverage their global IP assets into top-line revenue growth.

Our Technology Transactions & Licensing Practice Group lawyers focus their practices in these legal crossroads.  They represent clients ranging from entrepreneurial start-ups to Fortune 500 industry leaders in straightforward and complex multi-party transactions, both domestically and internationally. Such transactions include:

  • Applications Service Provider Agreements
  • Asset Purchases & Sales
  • Clinical Trials
  • Collaboration & Consortium Agreements
  • Confidentiality, Non-Use and Non-Disclosure Agreements
  • Consulting Services
  • Development and Joint Development Agreements
  • Distribution and Supply Agreements
  • Employee Confidentiality, Invention Assignment and Non-Competition Agreements
  • Source Code Escrow Agreements
  • Global Sourcing and Outsourcing
  • Hosting and Managed Network Services
  • Internet/Website Linking, Terms of Use, Acceptable Use and Privacy Statements
  • Joint Defense Agreements
  • Joint Ventures and Strategic Alliances
  • Licensing – In/Out/Cross (Universities, Government and Private Clients)
  • Maintenance and Support Services
  • Patent, Trademark and Copyright Assignments
  • Security Interests in Intellectual Property and Technology
  • Sponsored Research Contracts (Both for Universities and Private Research)
  • Value-Added Reseller and OEM Agreements

We negotiate transactions for buyers and sellers, licensors and licensees, and manufacturers and distributors, our lawyers taking a business-focused approach that emphasizes alignment with business objectives. We strive to engage as early as possible to ensure that a deal conforms to a client’s intellectual asset management strategy. We advise on the appropriate structure to minimize regulatory and antitrust complications, reduce patent or trademark application issues, and maximize tax efficiency. We provide guidance on confidentiality and trade secret matters, and evaluate the use of IP portfolios to shelter investments in products and markets so that clients can be protected from unintended consequences or the effects of business changes. Collectively, we employ our skills and experience to create legal terms and conditions that are clear and comprehensive, helping clients to maximize return on their licensing investment.

Members of our team negotiate transactions that require an understanding of the nuances between commercial and governmental research and academic relationships, the Federal Transfer Technology Act (Bayh-Dole), and the regulatory landscape.  Our lawyers bring their experience as business people, entrepreneurs and scientists to help solve our clients’ legal challenges. This unique combination of real-world experience and legal insight helps us steer clients through the uncertainties of commercialization by recommending best practices through proven licensing programs and record-keeping processes.

Because licensing agreements are often transnational, the tax treatment of royalties, dividends and interest generated by the arrangement receives our particular attention. Our team understands the international treaty provisions that restrict many of the options ordinarily available to strictly domestic operations. Where such restrictions affect repatriation of assets, we can recommend effective alternatives to minimize the tax burden, as well as the optimum strategies for corporate structure and operation.