Technology and Licensing

Led by growth in the information technology, computer science, telecommunications, pharmaceutical and biotechnology industries, business transactions involving the development and transfer of technology continue to play an increasingly important role in today’s business environment.  Whether a business is a user or developer of technology, understanding and successfully navigating the legal landscape is, and will continue to be, critically important. 

A specialized and diverse set of skills are required to structure and negotiate transactions involving the development, purchase, sale, or licensing of technology.  A mastery of intellectual property and commercial law is needed, as well as business acumen, technical sophistication and knowledge of industry practices.

Armstrong Teasdale’s representation of clients in the areas of computer and technology law, biotechnology, drug and medical device development, commercial product development and intellectual property law has resulted in the formation of a separate practice area within the firm which concentrates on technology transactions and licensing matters.  By forming a separate practice area within the firm focused on technology and licensing, we are able to provide support to clients who are confronted with issues in these areas in the most efficient and cost effective manner.

Practice Highlights

We assist clients in establishing the structure and key terms of business transaction and in developing and negotiating intellectual property rights allocation, licensing terms, warranties, indemnities, damages disclaimers, limitations of liability, and the like.  Examples of areas where we routinely apply this specialized knowledge:

• Licensing and Corporate Partnering: We work with clients when structuring and negotiating in-licensing and out-licensing agreements and strategies related to all areas of intellectual property, including, patents, know-how and trade secrets, trademarks and copyrights. We provide assistance to clients in structuring and negotiating corporate partnering, joint development and collaborations agreements, including finding new and innovative solutions to emerging opportunities.
• University Licensing and Sponsored Research: We help clients facilitate university licensing and sponsored research projects and agreements with academic and research institutions throughout the U.S.  In addition, we coordinate universities with respect to patent prosecution and out licensing of technology.
• Distribution, Supply, and OEM Agreements: We represent both buyers and sellers in the structure and negotiation of agreements for purchase and supply of materials and components and the manufacture of finished goods.  These agreements regularly require careful negotiation of the allocation of underlying intellectual property rights to maintain and protect each party’s business interests.
• Computer Software: We assist both providers and users in the development, procurement, protection and maintenance of computer software. This experience includes dealing with packaged software, modifications of packaged software and the development of custom software.  The Technology and Licensing practice area has had extensive experience with complex software and systems development, joint ventures and other similar arrangements.
• Intellectual Property Litigation: We coordinate with the Intellectual Property Litigation practice group with respect to litigation matters involving the enforcement and defense of intellectual property assets, as well as unfair competition and other technical issues.

Related Practice Areas

• Biotechnology and Life Sciences
• Government Relations
• Intellectual Property
• Private Equity and Emerging Business

Members of the Technology and Licensing Practice Group

Jefferies, Mike	Pozaric, Steven
Kass, Michael	Schuckman, Matthew
Mayfield, Andy	Trelz, Tessa
McFadden, Timothy