Practice

Licensing & Strategic Alliances

Empowering Innovation with Strategic Alliances

Our Licensing & Strategic Alliances attorneys have in-depth experience in both intellectual property and commercial law to negotiate and close licensing and collaboration agreements and other complex commercial transactions, including in the life sciences, energy and climate, and cannabis industries. Our team combines extensive industry experience and technical knowledge with a deep understanding of the law to develop creative solutions and strategically leverage intellectual property assets at all stages of a company’s life cycle.

We regularly advise licensees and licensors across geographies, product stages and diverse technologies and industries, including pharmaceuticals, biotechnology, AI/machine learning, medical devices, diagnostics, and consumer products. We also leverage the experience of attorneys in adjacent specialized practices, such as patent and trademark prosecution, FDA, reimbursement, tax, privacy, bankruptcy, international trade and export controls, to advise on the multifaceted issues raised by these critical transactions. 
 

Areas of Focus

Through the seamless integration of our corporate and intellectual property teams, our attorneys counsel our clients through early structuring, term sheet stage, drafting and negotiating the entire range of licensing and strategic alliances agreements, including:
  • Complex Collaboration Agreements
  • License Agreements 
  • Research and Development Agreements
  • Commercialization Agreements, Marketing and Distribution Agreements
  • Manufacturing Agreements (CMO/CDMO) and Supply Agreements
  • Option Agreements
  • Evaluation/Pilot Agreements
  • Clinical Trial Agreements (CTA)
  • Contract Research Organization (CRO) Agreements
  • Master Services Agreements (MSA) 
  • Material Transfer Agreements (MTA)
  • Quality Agreements
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

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 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.

People

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