Licensing

Licensing your intellectual property (IP) can provide a potential new revenue stream and can allow you to reach new markets and expand your product and customer base. Whether you are an emerging start-up company or an established multinational corporation, Sterne Kessler can help structure licensing agreements that advance business objectives, establish enduring relationships, and capture the value of your IP assets.

Good licenses protect intellectual and tangible property rights, and facilitate successful business relationships. Our licensing team works closely with our clients’ business, legal, and technology professionals to draft, negotiate, and enforce a variety of licensing agreements and contracts. We develop terms that are effective to advance your business goals and strengthen alliances. We also perform the necessary due diligence and IP portfolio analysis needed to assess and mitigate your risk before entering into a licensing agreement or other contractual relationship involving IP assets and technology.

Our licensing team combines deep technical knowledge, unparalleled IP experience, and a strong grounding in transactional law. Our clients cover a wide range of industries, from biotechnology and pharmaceuticals, to consumer products, electronics, manufacturing, medical devices, and software, amongst others. We are particularly adept at developing strategies to exploit technologies and to navigate the myriad legal and technological issues that arise in drafting and negotiating agreements involving technology transfer. In addition, several Sterne Kessler directors have earned Certified Licensing Professional accreditation.

Sterne Kessler has experience drafting and negotiating all types of agreements involving patents, trademarks, copyrights as well as technology and other tangible assets. Our experience includes:

IP & Technology Development

  • Advertising and marketing agreements
  • Conditional transfers of IP rights
  • Consulting/independent contractor agreements
  • Cooperative research and development agreements
  • Feasibility study agreements
  • License option agreements
  • Lien and security interest agreements
  • Material transfer agreements
  • Non-compete agreements
  • Nondisclosure and confidentiality agreements
  • Outsourcing agreements
  • Patent pool agreements
  • Research and development agreements
  • Shrink-wrap and click-wrap licenses
  • Software and other end-user IP licenses
  • Software development agreements
  • Sponsored research agreements
  • Technology service agreements
  • Testing service agreements

Industry Licensing & Technology Transfers

  • IP asset purchase agreements
  • IP license agreements

Industry Relationship Agreements

  • Co-branding agreements
  • Joint defense agreements
  • Joint development agreements
  • Joint marketing agreements
  • Joint venture agreements
  • Manufacturing agreements
  • Settlement agreements (litigation and interference)

Internet-Related Agreements

  • ASP agreements
  • Co-location agreements
  • Internet service reseller agreements
  • Web hosting agreements
  • Website development agreements
  • Website linking agreements

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