Our Practice
Licensing Practice

Value is the touchstone of intellectual property. Value comes from the ability of a company to apply intellectual property to create or enhance its competitive edge. At Oblon, Spivak, we recognize that intellectual property licensing is the critical common denominator among all disciplines of intellectual property. Licensing is the tool that heightens the value of intellectual property rights, and the lack of licensing is typically the cause of intellectual property litigation. We strive to provide our clients with the most effective representation and to assist them in adopting a comprehensive approach to intellectual property management. Our lawyers are experienced, skilled and ready to handle this most-critical aspect of that representation - licensing.

Areas of Focus

• Patent, Trademark and Know-How Licensing
• IP Audits
• BXA Licensing

Our approach to handling commercial transactions involving intellectual property emphasizes reliability and predictability. Without being able to rely on the outcome of a transaction, the assessment of value cannot be completed.

As the importance of intellectual property to business viability increases, companies face the critical need to execute and manage intellectual property contractual relationships efficiently. Whether the relationship is a straightforward patent license or a complicated multi-dimensional joint venture, our lawyers are experienced in capitalizing on the opportunities and avoiding the pitfalls. Our lawyers have honed their skills through years of counseling clients concerning diverse technology transfer issues, including strategic alliances, joint ventures and development contracts in both the private and the public sectors.

We stress the need to work as members of a team together with company business advisors and in-house counsel to provide an integrated and effective approach. Our team approach has proven successful in our representations of every scale of business enterprise, from large, multi-national companies to smaller, technology start-ups. Though the scale of the tasks may differ with the client, the critical need to license technology effectively and acquire timely license rights remains the same.

The creation of commercial relationships cannot be divorced from the first step of effective intellectual property acquisition, whether through prosecution or otherwise. On the other hand, technology companies depend not only on the broad protection of technology and intellectual property, but also on their commercialization. Our lawyers implement multi-faceted programs to realize the full value of IP portfolios. We provide a value-added approach to technology transfer agreements due to our sound and tested preeminence in both patent and trademark prosecution and litigation of intellectual property disputes.

Thorough analysis of a company's contractual rights and obligations requires in-depth understanding of its technology. To fully understand the industry environment, a lawyer must be proficient and agile with the technology. Our lawyers take pride in their significant technical experience. They are technically trained in all of the scientific areas including chemical compounds and processes, mechanical devices, and electronics. Nearly every attorney in the firm involved in patent matters has one or more degrees in science and engineering disciplines.

Counseling in intellectual property licensing requires a broad spectrum of expertise in the areas of intellectual property law, contract law and anti-competition law. As a full-service intellectual property law firm, we can provide representation concerning dispute resolution in any forum selected, including domestic and international arbitration bodies. This expertise ensures that the results of the agreement are predictable and valuable.

A focused intellectual property strategy requires the well thought out and supported investigation created by a detailed audit of a company's intellectual property. Audits provide the kind of reliable information that is necessary to determine which assets to license, which areas of the business may be vulnerable, and how to mature an intellectual property position.

The reliability of training and experience is essential to the proper evaluation of intellectual property during the contemplated completion of any transaction. We provide this value to our clients through our performance of due-diligence investigations. Our investigations go beyond the typical insight that is necessary to know whether to complete a transaction and focus on the more subtle issues of intellectual property valuation.

For both U.S. and foreign corporations, compliance with the export control licensing requirements of the Bureau of Export Administration (BXA) of the Department of Commerce is becoming increasingly important. We are experienced and adept in advising clients on BXA compliance issues. We provide our clients with the necessary documentation to avoid pitfalls and to ensure that they realize the highest level of profitability

Domestic exporters of technical data or commodities and foreign corporations receiving this technical data or commodities need to understand and follow the licensing procedures of the BXA. Understanding and compliance is critical for two major reasons. First, U.S. export controls play an important role in successful international transactions involving technical data and products originating from the U.S. Since export controls may, in some instances, delay or even prohibit exports or re-exports, it is extremely important to review how these controls apply to particular transactions before undertaking expensive research, marketing, or negotiating efforts, and before agreeing either to export or receive technical data or commodities originating from the U.S. This can effectively limit a corporation's financial risk and encourage the foresight to ensure that agreements are properly drafted to minimize liability in the case of delays or prohibitions.

Second, both U.S. and foreign corporations are subject to severe legal and business consequences if they do not comply with U.S. export controls procedures and regulations. Violators can face substantial fines and stiff prison sentences. More importantly, violation of U.S. export controls can result in a denial of the privileges to export technical data or commodities from the United States, to receive technical data or commodities exported from the United States, or to import technical data or commodities into the United States. Denial of these important privileges can devastate domestic firms and foreign companies depending on international markets.

Our professional staff counsels domestic and international companies to ensure that they understand U.S. export controls and the key concepts upon which they are based. In order to export certain goods or technical data from the United States, a company must receive a validated license from BXA. Other exports from the United States do not require a license and may be shipped without BXA approval. These exports are said to be exported pursuant to a license exception. Where technical data that is to be part of a patent application is to be exported, a foreign filing license can be obtained from the PTO.

The basic question confronting a corporation interested in exporting goods or technical data from the United States is whether the particular export will require prior BXA approval and a validated license or whether the export may take place without prior approval pursuant to a license exception.

The expertise of our professionals is extremely valuable because of the sophisticated nature of the commodities and technical data monitored by BXA. Our technical expertise enables us to determine whether certain commodities or technical data meet the definitions of the items listed in the Commodity Control List or qualify under a general license. We are also able to consult with various export licensing officials face-to-face as our office is conveniently located near the BXA's national capital offices.

Understanding and complying with BXA export control licensing requirements is critical to ensure the successful export and import of intellectual property. Our lawyers are pleased to facilitate this complex process and to provide the peace of mind that comes with our trusted experience and expertise.

Our lawyers are intensely involved in the development and implementation of strategic licensing planning. This includes the traditional areas of licensing practice, including drafting license agreements, negotiation, and enforcement.

Our lawyers are involved in many aspects of international licensing practices including the International Licensing Executives Society ("LES").