Practice

Licensing & Strategic Alliances

Creating value from innovation

Our Licensing & Strategic Alliances lawyers have the in-depth experience in both intellectual property and commercial law to negotiate complex licensing and collaboration agreements that help clients achieve their business goals. Our team combines their extensive technical knowledge with a deep understanding of the law to develop creative partnering arrangements, negotiate on your behalf, and strategically leverage your intellectual property assets around the globe.

We regularly advise both licensees and licensors across geographies, product stages and diverse technologies and industries, including pharmaceuticals, biotechnology, hardware and software, internet and e-commerce, medical devices, diagnostics, software and consumer products. We also are able to leverage the experience of attorneys in adjacent practices, such as FDA, reimbursement, tax, privacy, antitrust, bankruptcy and export controls, to advise on the multifaceted aspects raised by these critical intellectual property transactions. 
 

Areas of Focus

Through the seamless integration of our Life Sciences, Technology and Intellectual Property practices, our attorneys can counsel you through the entire range of licensing matters, including:
  • Research and development
  • Option and evaluation
  • Commercialization
  • Manufacturing and supply
  • Co-development and co-promotion
  • Marketing and distribution
  • Technology escrow
  • Security and performance measures
  • End-user agreements
  • Application service provider (ASP) agreements
  • Software license and subscription agreements
  • SaaS
  • Technology transfer arrangements

Experience

LIFE SCIENCES

  • Digital therapeutic developer MedRhythms in a license agreement with Biogen (Nasdaq: BIIB) to develop and commercialize MR-004, an investigational prescription digital therapeutic for the potential treatment of gait deficits in multiple sclerosis, for $3 million in upfront payments and up to $117.5 million in potential milestone payment, plus royalties
  • Genocea Biosciences (Nasdaq: GNCA), a biopharmaceutical company developing next-generation neoantigen immunotherapies, in an R&D collaboration and option agreement with Janssen Biotech to explore the immunogenicity of neoantigens and the role and impact of Inhibigens in the context of vaccine therapies for cancer 
  • HiFiBiO Therapeutics, a multinational clinical-stage biotherapeutics company with expertise in immune modulation and single cell science, in an agreement to exclusively license its Galectin-9 program, and grant an exclusive option to its CXCR5 and CCR8 programs, to biopharmaceutical company FibroGen, Inc. (Nasdaq: FGEN)
  • Intellia Therapeutics (Nasdaq: NTLA), a clinical-stage genome editing company with a proprietary CRISPR/Cas9 technology platform, in a strategic collaboration with SparingVision, a genomic medicine company based in France developing treatments for ocular diseases, to develop new ocular therapies addressing unmet medical needs
  • Ginkgo Bioworks, the organism company, in various collaboration and license agreements, including:
    • with Novo Nordisk A/S (NYSE: NVO) to create novel expression hosts for pharmaceutical products
    • with Agenus and its subsidiary SaponiQx to develop saponin molecules for high-efficacy and long-lasting protection for pandemic vaccines
    • with Givaudan to accelerate development and enhance Givaudan's portfolio of taste and scent ingredients
    • with Sumitomo Chemical Co. to significantly increase the production efficiency and sustainability of a key bio-based commercial product
    • with Biogen (Nasdaq: BIIB) to develop a next-generation recombinant adeno-associated virus (AAV) production platform
  • Genevant Sciences in its global collaboration and license agreement with Takeda Pharmaceutical Company Limited (NYSE: TAK) for the discovery, development and commercialization of LNP-delivered nucleic acid therapeutics directed to previously inaccessible drug targets in hepatic stellate cells to treat liver fibrosis
  • LegoChem Biosciences (KOSDAQ: 141080) in numerous collaboration agreements, including:
    • two collaborations with Iksuda Therapeutics totaling over $625 million in development, regulatory and commercial milestone payments: (i) a research collaboration and license agreement for the development of antibody-drug conjugates in oncology, (ii) a global license agreement for the development and commercialization of LCB73, a CD19-targeted ADC candidate for hematological tumors
    • a $400+ million multi-target research collaboration and license agreement with Takeda Pharmaceutical Company Limited
  • Dicerna Pharmaceuticals (Nasdaq: DRNA) in numerous agreements, including:
    • a global collaboration agreement with Novo Nordisk A/S to discover and develop novel therapies for the treatment of liver-related cardio-metabolic diseases for an upfront payment of $175 million, a $50 million equity investment and up to $357.5 million per target in development, regulatory, and commercialization milestone payments
    • a global collaboration and license agreement in excess of $1.67 billion in upfront and milestone payments, plus royalties, with F. Hoffmann-La Roche AG to develop and commercialize DCR-HBVS for the treatment of chronic Hepatitis B Virus (HBV) infection
    • three collaborations totaling over $4.5 billion in potential deal value and $250 million in upfront and equity investments: (i) global licensing and research collaboration with Eli Lilly focused on potential new medicines in the areas of cardio-metabolic disease, neurodegeneration and pain; (ii) collaboration with Alexion Pharmaceuticals to discover and develop RNA interference therapies for complement-mediated diseases; and (iii) research deal with Boehringer Ingelheim to discover and develop novel GalXC™ RNAi therapeutics for the treatment of chronic liver diseases, initially nonalcoholic steatohepatitis (NASH)
  • Alexion Pharmaceuticals (Nasdaq: ALXN) in a $650+ million collaboration peptide deal with Zealand Pharma
  • LG Chem Life Sciences in a $900+ million multi-target, strategic collaboration with CUE Biopharma that provides LG Chem with the Asia rights to Cue Biopharma’s lead immuno-oncology CUE-101 program, and products in the two other CUE-102 and CUE-103 programs as well as a worldwide option for another antigen focused biologic
  • Korean pharmaceutical company Dong-A ST in its $525 million exclusive license agreement for the global development and commercialization of its investigational immuno-oncology drug Mer tyrosine kinase inhibitor (Mer TKI) with U.S. pharmaceutical company AbbVie Inc.


TECHNOLOGY

  • Motional, a global leader in driverless technology, in a landmark agreement with Lyft (Nasdaq: LYFT) to launch a multimarket robotaxi service in major US cities
  • Tracking technologies pioneer Position Imaging Inc. (PI) in:
    • its partnership with Bell and Howell to provide complete installation and maintenance service of PI’s new retail Smart Package Room solution for retail customers across North America.
    • its partnership with global technology firm Hitachi-LG Data Storage, Inc. (HLDS) for the production and manufacturing of its revolutionary Amoeba product line of innovative package tracking systems.
  • A fabless semiconductor company in its licensing of technology and patents from IBM.
  • A software company in licensing to state health insurance exchanges established by the Affordable Care Act. 
  • A developer of software and hardware systems for position tracking in collaboration agreement with a sports media company.
  • A maker of software used for Internet data caching in its licensing of its software to a major Indian telecommunications network.  


ENERGY/RENEWABLES

  • Crafted an early stage discovery and equity investment deal for an MIT renewable energy spinoff, with a major transportation fuels partner and early stage venture capital investor.
  • Advising energy client on potential joint venture with Latin American based energy conglomerate.
  • A major multinational client in “smart room” joint venture.


RETAIL

  • A major automotive manufacturer in a wide variety of matters, such as inbound software and technology licensing, outbound data licensing, strategic alliance with a public company, and development of form agreements including a master services agreement, purchasing agreement, and confidentiality agreement. Also advised on protection and licensing of its brand-name trademarks, including advising on and negotiating licenses to authorized dealers and other affiliates. 
  • A brand name shoe manufacturer and distributor in its acquisition of licenses to use a number of famous fashion trademarks on its shoe lines.
  • A fitness company in connection with securing, registering  and licensing the brand for use by gyms, fitness studios and individual instructors nationwide.


RESEARCH

  • Regularly provide counsel to emerging technology companies on early stage research agreements, including with AstraZeneca, GlaxoSmithKline, Medtronic, Sanofi, Stryker and Texas Instruments.
  • Represent companies in-licensing IP from academic institutions such as Harvard, MIT, Whitehead Institute, Johns Hopkins and UCSF, as well as represent institutions (e.g. Harvard Medical School, Dana Farber and Tufts) in out-licensing intellectual property.

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