Technology Transfer

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Today’s research and development enterprises occupy a crucial role in converting modern innovations into profitable business solutions. However, there are unique and arduous challenges involved in commercializing innovations, especially at the early stage of their discovery and development. At Dickinson Wright, we recognize the importance of identifying and protecting innovations at the earliest stage possible in order to help them reach their commercial potential and give our clients a competitive advantage. For decades, our technology transfer team has helped clients achieve exactly that by navigating the potential risks and complicated transactions that come with the development, licensing, acquiring, and selling of technology.

Our Clients

We work directly with companies that touch all areas of the innovation ecosystem including public and private research institutions, technology incubation facilities, capital investment, and deployment specialists, business development and management talent, as well as technology development companies ranging in size from virtual startups to large, public companies.

Awards and Recognitions

Many of our technology transfer attorneys have been recognized by Chambers USA®, Best Lawyers®, the National Law Journal, and other leading evaluating organizations. Additionally, they have authored materials and frequently speak on matters related to technology transfer, ranging from intellectual property strategy to strategic initiatives.

Our Services

• Commercialization and monetization of intellectual assets
• Inbound and outbound technology licenses
• Identifying and clarifying ownership between interested parties
• Joint development strategy and procedures
• Domestic and international privacy regulations
IP protection
• Licensing software, hardware, and technology for transfer
• Outsourcing
Patent prosecution
• Board and operational governance, policy development and implementation
• Procuring and protecting trade secrets
• Virtual management of technology transfer offices (TTO)

Representative Matters 

 –Designed and implemented corporate strategic initiatives, including comprehensive license frameworks designed to utilize core research capabilities within research institutions

Managed intellectual property reporting and transparency requirements of academic-based developments. 

Represented industry clients regarding policy and conflict of interest management programs involving academic or human subjects research, including institutional review board matters. 

Prepared and negotiated research and development agreements, sponsored research agreements, collaboration agreements, and inter-institutional agreements. 

Prepared and negotiated intellectual property licenses, options, and related technology transfer agreements in light of public policy and tax considerations. 

Structured and negotiated data processing-related arrangements, including software licenses, SaaS agreements, outsourcing agreements, computer equipment acquisitions, maintenance, and support contracts and distribution relationships. 

Implemented and managed principal investigator relationships ranging from conflict of interest, conflict of commitment, and research integrity matters relating to technology transfer events. 

Participated in federal, state, and foundational funding events (grants, awards, earmarks, SBIR/STTR) regarding required intellectual property statements, licenses, and certifications. 

Counseled and trained inventor groups, research departments, and academic and health care institutions in institutional policies and procedures, as well as intellectual property aspects of commercialization and start-up formation. 

Assisted with academic-industry relationships and federal compliance (Bayh-Dole), including iEdison reporting requirements for federally funded subject inventions.

Assisted in creating nonprofit foundations and agency models for managing and commercializing research and innovation, including fund formation. 

 

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