Licensing, Technology Transactions, & Patent Monetization

Licensing, Technology Transactions, & Patent Monetization

Our attorneys focus on providing services to established companies, start-ups and entrepreneurs with the business opportunities created by advances in technology, including the licensing, acquisition and sale of intellectual property and technology.

Drawing from our specific industry knowledge and real-world experience, our lawyers efficiently and successfully close our client’s technology transactions. Yudell Isidore’s attorneys are educated and experienced in numerous engineering and technology fields, and many have the added advantage of previously having served in-house at both start-up and large technology companies. As a result, we offer efficient, experienced teams that have successfully closed technology transactions and partnerships with both new, high-tech ventures and large international corporations.

Our services include:

  • IP and technology licensing of software, hardware, electronics, manufacturing designs and processes, digital content, technical know-how, trade secrets, patents, copyrights, and trademarks.
  • Drafting and negotiation of complex research, development and partnering agreements, such as evaluation, R&D, joint development, confidentiality, manufacturing, buy-sell, distribution, e-commerce, marketing and consulting agreements.
  • Evaluation, structuring, due diligence, negotiation, and documentation of major domestic and international transactions involving all types of technology and IP assignment, investment, acquisition, divestiture, distribution, and strategic licensing issues.

Partnering

Our clients’ business arrangements often involve intellectual property from diverse parties. Yudell Isidore’s lawyers are experienced in structuring, drafting, and negotiating complex joint venture, joint marketing, joint development, strategic alliance, manufacturing, buy-sell and collaboration research arrangements. This skill also extends to agreements covering all aspects of product distribution, including distributors, sales representatives, original equipment manufacturers (OEMs), value-added resellers (VARs), channel allies, and franchisees.

Licensing and Technology Transfer

Our attorneys are experienced in all aspects of technology transfer arrangements, from initial due diligence to contract negotiation and oversight of contract execution to ensure a smooth transfer of the technology. To specify the license rights or technology being transferred, we assist in the development and negotiation of an effective contract that clearly defines areas such as scope of license and ownership, compensation, performance standards, security and confidentiality, auditing, reporting, business resumption and contingency planning, subcontracting, sub-license rights, dispute resolution, and indemnification.

Patent Sales and Licensing

Patents are a complicated asset whose value depends upon a number of factors including the strength and breadth of the claims, whether or not the invention is being practiced today (or the likelihood that it will be in the future), and the size of the impacted market and related revenues. There are also several factors that can decrease the value of a patent including encumbrances such as licenses, similar prior art, or issues with the prosecution history. A thorough understanding of these factors from a business, legal, and technical perspective will ensure that we realize the maximum value of your assets.

Yudell Isidore provides professional intellectual property brokerage services, which overcome the traditional barriers to patent transactions including:

  • The complexity of the patent sales process
  • The legal strength of the patent assets
  • Valuation of the assets
  • Encumbrances and other factors such as licenses
  • A strong understanding of the buying market

Yudell Isidore’s deep intellectual property brokerage experience and rigorous patent sales process enables us to:

  • Effectively coordinate business, technical and legal skills to properly value assets
  • Utilize our network to reach the broadest set of potential buyers
  • Develop reseller marketing collateral
  • Set aggressive deadlines and manage the bidding process
  • Successfully facilitate the closing of transactions at the highest possible price