IP Licensing & Contracts

Overview

“Blank Rome provides a holistic offering that allows the team to act on an array of litigation, transactional, and prosecution matters across the spectrum of IP rights and technologies.”

— Chambers USA

Businesses are often both licensors and licensees of technology. Bringing intellectual property to market can be quite challenging and presents a number of risks based on the product or service being commercialized or licensed. It’s critical to have counsel who has successfully worked on both sides of the arrangement.  

Our intellectual property attorneys draft and negotiate a wide range of licenses and agreements tailored to each clients’ needs. Our goal is to ensure that the IP rights of the owner are protected, while also ensuring licensees have all rights that are necessary to enjoy the IP asset. In the hotbed of software and technology, we also handle licensing and other contracts covering hosting, maintenance, data, computer systems, hardware and networks, as well as telecommunications services, cloud services, data processing, disaster recovery, information technology services, and much more.

Commerce and intellectual property take many forms in addition to cutting-edge technology and software, and so our work also includes outsourcing, OEM, VAR, resale, private-label, supply, and many other sourcing and distribution agreements and models. 

Beyond the sophisticated agreements described above, we regularly work with our corporate group on technology acquisitions and other related transactions, applying our hands-on experience to evaluate and counsel clients on targets and transactions.

How We Can Help 

Our specific experience in drafting and negotiating complex agreements for licensors and licensees, and buyers and sellers of all kinds relating to intellectual property in domestic and international transactions, includes:

  • technology development agreements, implementations for software applications, development of mobile applications
  • patent, trademark, copyright, and trade secret licenses
  • joint ventures, co-development, and joint marketing agreements
  • manufacturing, distribution, supply, fulfillment, and other commercial agreements
  • branding agreements, artwork purchase agreements, publishing, music, media, and entertainment agreements
  • collection, use, licensing, and sale of aggregate and personally identifiable information, data supply and license agreements, and related security and privacy issues 
  • biotechnology, nanotechnology, and other life sciences agreements, and technology transfer agreements
  • website and app development, targeted and behavioral advertising, collection and use of user-generated content, development, design, and hosting agreements
  • data security and other privacy agreements
  • acquisition and sale of public and private entities with respect to intellectual property and other intangible assets
  • creation, administration, registration, and bonding of sweepstakes, contests, and other promotions, including rule preparation, liability releases, registration and bonding requirements, review of marketing materials, and response to regulatory inquiries
  • settlement, covenant-not-to-sue, and other agreements to resolve disputes related to intellectual property
  • cooperative research and development agreements (“CRADA”), material transfer agreements (“MTA”), and sponsored research agreements
  • protection of proprietary “know-how”

Team

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