Licensing & Technology Transfer

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There are many ways technology is transferred. It may be "sold" and assigned to a purchaser. It may be gifted, bequeath (in a will) or exchanged and assigned to the recipient. Ownership may be retained by the owner while exclusive or nonexclusive rights may be granted via a license.  Technology may also be subject to transfers to secured creditors, judgment creditors or a bankruptcy estate.

A patent license is essentially a contractual promise (a covenant) not to bring an infringement suit. Even an exclusive patent license does not convey an interest in the patent unless it has the legal effect of an assignment. Under certain circumstances, an exclusive license may amount to a grant of the "exclusive right to make, use, and vend the invention throughout the United States, or in a specified part thereof, or of any undivided part or share of that exclusive right.

A trademark and copyright may also be assigned or licensed. While the transaction is more complex, trade secrets may also be transferred. Unpatented technology and unregistered trademarks/copyrights may also be transferred. Our office can assist in structuring these transactions, reviewing/drafting proposals, assessing the validity of the trademarks and patents, negotiating royalties and related services.