Practice

Licensing & Strategic Transactions

Creating Value From Innovation

Our Licensing & Strategic Transactions attorneys have in-depth experience in both intellectual property and commercial law, enabling us to negotiate and close licensing agreements, collaboration agreements, joint development agreements, partnership agreements, option and milestone arrangements, manufacturing/supply agreements, customer engagements, and other complex commercial deals and intellectual property-driven transactions across technologies and industries. We excel at structuring, negotiating and executing these transactions in a manner that delivers innovative, business-focused solutions at every stage of the product life cycle. We bring together industry insights and technical acumen with deep legal understanding to craft creative strategies, advocate effectively on behalf of our clients, and leverage intellectual property assets strategically.

We are trusted advisors to clients across the globe, at every stage of development, and in a wide array of cutting-edge technologies and industries—including pharmaceuticals, biotechnology, medical devices, diagnostics, AI/machine learning, software, hardware, energy and climate, cannabis, software and consumer products. By drawing on the specialized expertise of our attorneys in other practice areas, including patent and trademark, FDA, reimbursement, tax, privacy, bankruptcy, international trade and export controls, we provide comprehensive, strategic counsel on the most complex and high-stakes transactions. Our teams are at the forefront of deals that shape the future of life sciences, technology, and energy and climate solutions.
Our dedicated Licensing & Strategic Alliances team brings deep sector knowledge and a proven track record, with extensive expertise in the life sciences, energy and climate, cannabis and other industries, guiding clients through every stage of the deal process with precision, insight, and a commitment to achieving their strategic objectives.
Our Technology Transactions team leverages extensive experience across emerging and established technologies to structure, negotiate, and execute complex software, AI/ML, cloud computing and data and other technology deals that drive innovation and protect our clients’ competitive advantage in a rapidly evolving marketplace.

Experience

LIFE SCIENCES

  • Alloy Therapeutics, a biotechnology ecosystem company, in a strategic collaboration and licensing agreement with Takeda to develop and commercialize the latter’s induced pluripotent stem cell (iPSC) driven CAR-T cell platform (iCAR-T) and CAR-NK platform (iCAR-NK) for cell therapy in oncology indications
  • LigaChem Biosciences (KRX: 141080), a clinical stage biopharmaceutical company, in numerous collaboration agreements, including:
    • in two transactions involving the license of LigaChem technology to Ono Pharmaceutical (TSE/TYO: 4528), to grow Ono’s oncology portfolio: (i) an exclusive license to LCB97, a pre-clinical stage antibody-drug conjugate (ADC) aimed at being a first-in-class drug in the field of solid tumors, for upfront and milestone payments of up to $700 million, plus tiered royalties; and (ii) a research collaboration and license agreement to generate novel ADC candidates leveraging LigaChem’s ConjuAll™ ADC platform, granting Ono an exclusive global right to ADC candidates to be generated against multiple targets selected by Ono, for a target exclusivity fee, milestone payments, and tiered royalties
    • two exclusive worldwide antibody licensing deals with NovaRock Biotherapeutics for ADC Drug Development
    • a worldwide in-licensing transaction with Go Therapeutics for a new antibody platform designed for the development of ADCs
    • an antibody discovery agreement with Trican Biotechnology in which LigaChem will advance its proprietary pipeline of ADCs using antibodies generated by Trican
  • Novo Nordisk A/S (NYSE: NVO) in a collaboration, development and license agreement with Aspect Biosystems to develop up to four bioprinted tissue products for the treatment of diabetes and obesity, with $75 million upfront and up to $650 million in milestones per product, plus tiered royalties
  • Daewoong Pharmaceutical (KRX: 069620) in multiple transactions, including:
    • its exclusive licensing agreement with CS Pharmaceuticals for a first-in-class PRS inhibitor ‘Bersiporocin’ in Greater China region
    • its exclusive license agreement with and equity investment in Vitalli Bio, a portfolio company of Aditum Bio, for the development and commercialization of a first-in-class new drug targeting Bruton's Tyrosine Kinase (BTK) and Interleukin-2-inducible T-cell kinase (ITK)
  • AcuraStem in a license agreement with Takeda (NYSE: TAK) to develop and commercialize PIKFYVE targeted therapeutics for the treatment of Amyotrophic Lateral Sclerosis (ALS), for an upfront and milestone payments totaling up to $580 million, plus tiered royalties
  • Ginkgo Bioworks (NYSE: DNA), the organism company, in various collaboration and license agreements, including:
    • with Merck (NYSE: MRK) to engineer up to four enzymes for use as biocatalysts in Merck’s active pharmaceutical ingredient manufacturing efforts
    • with Novo Nordisk A/S (NYSE: NVO) to create novel expression hosts for pharmaceutical products
    • 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
  • MedRhythms, a digital therapeutic developer, in a license agreement with Biogen (Nasdaq: BIIB) to develop and commercialize MR-004, an investigational prescription software-as-a-medical device (SaMD) 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
  • 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
  • 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
  • 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

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
  • Position Imaging Inc. (PI), a tracking technologies pioneer, 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 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 agreements, purchasing agreements, and confidentiality agreements, and customer agreements for mobile and web-based applications. Also advised on protection and licensing of its brand-name trademarks, including advising on and negotiating licenses to authorized dealers and other affiliates. 
  • A fabless semiconductor company in its licensing of technology and patents from IBM.
  • A software company 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

  • Advising energy client on a joint venture with Latin American based energy conglomerate.
  • A major multinational client in “smart room” joint venture.

RESEARCH AND ACADEMIA

  • Routinely advise emerging technology companies on early stage evaluation, services and research agreements with large and midsize pharma, biotech, device, hardware, software and other technology companies.
  • Represent companies in-licensing IP from leading academic institutions, as well as prominent academic and research institutions in connection with out-licensing their intellectual property.
  • Regularly negotiate sponsored research agreements, material transfer agreements, clinical trial agreements, grant agreements and other research and collaboration agreements involving academic and non-profit entities.

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