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Stradling

Corporate Partnering and IP Transactions

Stradling’s Intellectual Property Transactions and Licensing practice group focuses on agreements and counseling related to the development, sale, use, and licensing of intellectual property assets. This multi-disciplinary practice area, which is at the intersection of corporate, commercial, and intellectual property law, focuses on the following areas:

Licensing
Our team has experience in representing both licensors and licensees in wide variety of licensing transactions involving:

 • Patents    • Trademarks   • Copyrights 
 • Trade Secrets  • Trade Dress  • Open Source
 • Rights of Publicity  • Rights of Privacy  

Types of licensing transactions include:

  • Pharmaceutical, medical device and biotechnology licensing
  • OEM and distribution agreements for hardware and software
  • In-bound licensing of software and content for distribution or inclusion within products
  • Trademark, branding and merchandising agreements, including private-label and third-party manufacturers use of consumer brands
  • Enterprise and click-through software licensing agreements
  • Dealing with university technology transfer offices
  • Representing joint defense groups against non-practicing patent licensing entities in crafting patent licensing agreements to cover joint defense group

Industries
Our licensing team has vast licensing experience in the following industries:

 • Medical Device  • Pharmaceuticals and Biotechnology 
 • Software  • Media and Entertainment
 • Action Sports and Apparel  • Internet
 • Retail and Consumer Products  • Energy and Clean Technology
 • Electronics and Computer Hardware  

We also have extensive experience representing buyers and sellers of intellectual property assets, such as patent and trademark portfolios. In addition, our attorneys are familiar with the more specialized aspects of such transactions, such as acquiring distressed IP assets.

IP Acquisition and Transfers
Many of our M&A transactions center around IP related assets, where the key elements being acquired or divested are intellectual property rights.

IP Centered Development Agreements
The Intellectual Property Transactions and Licensing practice group is experienced in representing both developers and customers in development and consulting agreements related to developing, modifying, or testing pharmaceutical products, software, hardware, and technology.

Data Privacy and Consumer E-Commerce Agreements
Stradling attorneys have experience counseling on data collection practices and their related contractual and disclosure requirements. We've represented many e-commerce companies in setting up user terms and privacy policies designed to properly allocate responsibility and liability related to use of Web-based services, user-generated content, and consumer data.

IP Issues in Corporate Finance and Bankruptcy
The Intellectual Property Transactions and Licensing practice group regularly works with the firm’s corporate group on financings, asset purchases, and mergers and acquisitions to negotiate and review the IP-related provisions of corporate finance agreements, conduct related due diligence, and review IP-related disclosures made by buyers and targets. Our attorneys are also experienced in advising on licensing issues related to licensors.