IP Transactions & Agreements

Effective IP transaction and agreement counsel requires a unique blend of technological, legal, strategic and business acumen. And Knobbe Martens brings it all together. We have the essential deep bench of technical expertise and business savvy to get the job done.

We routinely assist clients in a wide variety of transactions, including technology transfers, representing the country’s top research institutions and universities. We have vast experience in licensing cutting-edge technology and medical devices, establishing best practices for licensing programs, and tracking patent portfolio licenses.

We also counsel our clients on trademark licensing, working hand-in-hand to establish licensing programs to monetize trademark portfolios. Whether it is apparel or entertainment property, our trademark licensing team strategically works with clients to protect their rights, negotiate agreements, ensure compliance with quality control provisions, and enforce licensed rights.

We also have a wealth of experience with due diligence and clearance issues for licensed properties and brand and product line extensions. In addition, we assist our celebrity clients with licensing their rights of publicity and trademark rights and endorsement deals. 

Our copyright licensing team assists clients with licensing software and entertainment properties, as well as online and social media content. We also counsel clients on open source issues for software development and licensing of open source code.

Our clients span industries ranging from biotechnology, chemical, and pharmaceutical sciences to semiconductor, software, telecommunications and medical devices. In instances where myriad technologies and clients may be involved—such as cross-licensing and industry standards licensing—we can quickly understand and navigate multi-party rights in a patent landscape.

In conjunction with our network of international associates, we can handle licensing matters wherever and whenever our clients require. Furthermore, we can help them in-license or out-license technologies to create revenue streams by quickly and effectively addressing issues that arise during negotiations.

    Our attorneys have experience in all areas of IP transactions and licensing, including:

    Patent, copyright and trademark license agreements 

    Technology acquisition and sale agreements

    Reseller and OEM agreements 

    Distribution, supply and manufacturing agreements

    Joint development agreements

    Non-disclosure agreements 

    Professional service and consulting agreements 

    Joint venture agreements 

    Developing strategic licensing programs

    Website Terms and Conditions and Terms of Use (TOU)

    End User License Agreements (EULA)

    Copyright Releases

    Outsourcing Agreements

    Successes

    The Rockefeller University v. Ligand Pharmaceuticals, Inc.

    Biological Assay Technology Related to Drug Development. Representing defendant in a technology license dispute relating to GlaxoSmithKline's Promacta-brand product. Obtained favorable settlement prior to expert discovery. 

    Alios BioPharma

    The firm handled the intellectual property aspects of Alios Biopharma’s recent collaboration deal with Vertex Pharmaceuticals. Alios is a biopharmaceutical company that employs molecular modeling and replicon assays for drug screening. Vertex obtained rights to two hepatitis C drugs from Alios in a transaction worth up to $1.5 billion, said to be the largest preclinical licensing deal in history. Knobbe Martens developed an IP strategy for Alios, filed Alios’ patent applications, analyzed potential third party risks and strategies for market clearance, and assisted Alios in the due diligence aspects of the deal with Vertex.

    Television Studio

    Assisted a television studio with creating and establishing a licensing program for products based on a popular television series.

    Basketball Player

    Assisted famous basketball player with licensing of rights of publicity and endorsement to major national fast-food chain.

    Surfer

    Assisted famous surfer with licensing of rights of publicity to major apparel brand.

    Footwear Brand

    Assisted national footwear brand in securing endorsement deal for NBA players. 

    Knobbe Martens is pleased to announce that 21 of the firm’s partners in offices on both the East and West Coasts were ranked nationally and regionally in the recently released 2022 edition of IAM’s...
    Partner Mauricio Uribe was interviewed by Medtech Innovation for their Q&A series on “Why NDAs are still relevant to medtech firms and start-ups". For the Q&A, Uribe discussed the effects that NDAs...
    Partner Mauricio Uribe authored, "NDAs Remain a Potent Business Tool," which was published in MedTech Intelligence. Excerpt: "Nondisclosure Agreements (NDAs) are one of the core legal documents that...