Moving technology from the laboratory to the marketplace can produce significant economic returns, but the process involves complex issues of intellectual property protection, research collaboration and funding, and a range of possible business transactions. These issues are often made yet more complex by the sophistication of the research and the multitude of parties that collaborate.
Our team helps facilitate technology transfer at universities, research institutes, academic medical centers and other health care facilities. We routinely work with a broad spectrum of technologies, ranging from life sciences and medical devices to software and electronics. We help clients protect their intellectual property, while navigating through the nuanced regulatory, tax and government-funding processes needed to develop and commercialize them.
We are especially adept at helping clients through the complexities of licensing or spinning out technology developed in any of a wide range of academic settings into the private sector. We also have substantial experience working in-house at technology transfer offices and have developed excellent relationships with many academic research institutions and leading industry associations such as the Association of University Technology Managers (AUTM) and the Association of Independent Research Institutes (AIRI).
As critical as strong intellectual property protection can be to the performance of a technology transfer operation, we are keenly aware that institutions must effectively manage a number of other issues to succeed. From the management of material transfer agreements and export control issues to educating research faculty and reporting inventions to government funding sources, we can support you with a team that has the knowledge and experience to support your technology transfer needs.
Patent procurement
We help obtain patents, manage patent portfolios and make use of patent laws designed specifically to aid academic institutions to help clients protect the results of their research. We manage the patent process to accommodate researchers’ need to publish. We coordinate patent procurement efforts with multiple technology licensees and manage third-party relationships that can affect IP rights.
Agreements and licenses
We help clients negotiate a broad range of agreements that drive the development and commercialization of technology developed in the academic environment. These include nondisclosure, material transfer, consulting, sponsored research, clinical trial, and inter-institutional collaboration agreements. We help license technology in exchange for equity interest, royal or other forms of consideration, and negotiate mandates that require licensees to expend the appropriate effort to bring technology to market.
We manage inventorship investigations and represent clients in disputes with third-party collaborators who supply materials, funding, technical support and other resources.
Startups and spinoffs
We serve the full range of needs for entrepreneurs who want to start a company to commercialize the fruits of their academic research. We handle company formation and help secure angel or venture funding and help build a strong patent portfolio. We can also provide the full range of outside general counsel services, including support for contracting, employment, executive compensation, tax and real estate. We know that emerging companies have to move quickly and operate efficiently. We can structure our team and service model to meet your particular needs.
Selected Experience
Technology transfer for Cedars-Sinai Medical Center
Handling domestic and foreign patent prosecution, intellectual property licensing, and a variety of research-oriented agreements for a wide range of biotechnical and medical technologies developed at Cedars-Sinai. Supporting Cedars-Sinai's technology transfer operations, and providing strategic counseling to enable Cedars-Sinai to protect, leverage and enforce its intellectual property assets. (Ongoing)
Patent services for Stanford University
Preparation and prosecution of patents for Stanford since 1985. Have procured patents regarding photonic crystal technologies, carbon nanotube, and capillary electrophoresis separation and detection technology that has been licensed to a large biomedical instrumentation company. (Ongoing)
Patent services for University of Southern California
Ongoing Patent prosecution in various life sciences disciplines, including stem cell technologies, medical diagnostics and nanotechnology. (Ongoing)
Licensing agreements for AVI BioPharma, Inc.
Negotiated a license and related agreements with the University of Western Australia to certain exon-skipping technology useful in the treatment of Duchenne Muscular Dystrophy. You can read more in this AVI BioPharma, Inc. press release. (2008)
Technology transfer for Huntington Medical Research Institutes
In addition to preparing and prosecuting domestic and foreign patent applications, provide counseling in connection with intellectual property matters, including the structuring of external relationships for technology development, the management of relationships with equipment suppliers with regard to intellectual property developed through use of such equipment, and assisting in resolving inventorship disputes. (Ongoing)
Licensing agreements for Potato Variety Management Institute
Negotiated global and domestic sublicensing and marketing agreements for potato varieties developed by researchers at the University of Idaho, Oregon State University, Washington State University and the United States Department of Agriculture. (2007)
Licensing agreements for Ultreo
We negotiated a technology license with the University of Washington for this consumer health care products company. (2004)
Oregon Health & Science University v. Vertex Pharmaceuticals
Represented plaintiff in a lawsuit against a drug manufacturer in a claim of breach of contract and various patent related issues. (D. Or.)
Patent services for University of California
Patent prosecution and strategic counseling regarding laser fiber optic and treatment technology developed by UC and the Lawrence Livermore National Labs in association with EndoVasix, Inc. We also prepared and prosecuted patent applications for several campuses of the UC system. |