IP Transactions Overview

Intellectual property is continually becoming more prominent in corporate transactions, the value of corporations, and day-to-day business. Oblon’s IP Transactions group assists our clients in a wide variety of projects: from acquisition or sale of intellectual property and due diligence in such deals, to licensing technology to or from other parties, to the development of internal documents and procedures for capturing and managing all forms of intellectual property. Our attorneys also collaborate with clients in identifying and taking advantage of opportunities to expand or exploit the client’s intellectual property rights.

With our business-minded approach, combined with the technical capability of our attorneys, we are able to provide comprehensive transactional intellectual property services needed to succeed in the highly competitive world market. This comprehensive service is complemented by our extensive experience in patent and trademark prosecution, which permits us to expertly counsel our clients on issues that could value or devalue IP portfolios.

Our Services

Our team routinely counsels our clients on IP matters relating to:

• Strategic portfolio management
• Due diligence
• Patent mining and landscape mapping
• Business and technical collaborations
• Licensing programs
• Negotiating and drafting agreements
• Government contracts

We can assist our clients in negotiating, drafting, or modifying a wide array of IP-related agreements. A partial list of such agreements include: 

• Arbitration/ Mediation Agreement
• Asset Purchase Agreement (in conjunction with client’s corporate counsel's handling the overall transaction)
• Assignments
• Clinical Research Agreement
• Clinical Trial Agreement
• Co-branding Agreement
• Collaboration Agreement
• Conditional Transfers of IP Rights
• Content License Agreement
• Cooperation Agreement
• Cooperative Research and Development Agreement
• Copyright Assignment Agreement
• Copyright License Agreement
• Cross Licensing
• Domain Name Assignment Agreement
• Domain Name Transfers
• Indemnification Agreement
• IP Lien and Security Agreement
• IP Transfer Agreement
• Joint Defense Agreement
• Joint Development Agreement
• Joint Marketing Agreement
• Joint Venture Agreement
• License Option Agreement
• Litigation Cooperation
• Litigation Settlement
• Material Transfer Agreement
• Non-compete Agreement
• Non-disclosure/Confidentiality Agreement
• Patent License Agreement
• Research and Development Agreement
• Research and License Agreement
• Research and Option Agreement
• Right of First Refusal Agreement
• Settlement Agreement
• Software License Agreement
• Sponsored Research Agreement
• Strategic Alliance Agreement
• Technology Development
• Technology License/Assign Agreement
• Trade Secret / Know-How Access Agreement
• Trade Secret / Know-How Development Agreement
• Trade Secret / Know-How License Agreement
• Trademark Assignment Agreement
• Trademark Coexistence Agreement
• Trademark License Agreement

Our attorneys can handle transactions involving all types of technologies and industries, including chemical, biotech, pharma, nanotechnology, medical devices, and cosmetics; electronics and software, such as wireless, telecommunications, industry standards, and artificial intelligence; semiconductors and circuits; aerospace, automotive, heavy machinery, and robotics; high-tech plastics and glass; consumer products; and renewable energy and petrochemicals.

The IP Transactions group members are especially skilled at advising clients on the interplay of patents and business in IP-related transactions. We work closely with our clients’ corporate transaction teams to identify potential risks and benefits, determine effective uses of innovations, optimize intellectual property portfolio value, and improve the clients’ market position.

Our Clients

Our attorneys regularly work with business leaders, marketing professionals, scientists and technicians at our clients’ companies, and our clients’ outside corporate transactions attorneys. With an office in Tokyo, regular visits to domestic and foreign clients, and attorneys fluent in French, German, and Japanese, our attorneys communicate effectively with clients around the world. We also host client trainees, familiarizing them with the U.S. legal system, our culture, and customary business methods.