Akin Gump Strauss Hauer & Feld LLP’s IP transactions lawyers have extensive experience in handling all manner of domestic and cross-border transactions involving the creation, use, licensing and transfer of technology and IP. We provide strategic intellectual property counseling which positions our clients to maximize the utilization and creation of their IP, be it through extracting greater value from their IP portfolios, streamlining and culling their IP pipeline, and/or managing risks when entering a new product or business area. Our approach to IP strategy provides a plan, not just to strengthen future IP positions, but also to maximize revenue generation from existing IP assets. We understand that our clients are always under pressure to do more with less so we form partnerships with our clients’ business units to identify IP monetization opportunities while managing risk and cutting costs.
We counsel companies of all sizes in a wide range of industries and technologies, including software, hardware, semiconductor, Internet and e-commerce, telecommunications, energy, transportation, pharmaceuticals, medical devices, finance and consumer products.
Our lawyers structure stand-alone IP transactions and draft and negotiate the related contracts, such as license and settlement agreements, IP assignment agreements, R&D agreements, development and co-development agreements, information technology agreements, marketing agreements, Internet and e-commerce agreements, technology sharing agreements and employer/employee IP rights provisions.
The intellectual property and technology team focuses include:
- IP counseling and negotiation associated with M&A and spin-offs
- drafting and negotiation of IP licenses-in and licenses-out and settlement agreements
- IP-related corporate due diligence services to support financial transactions or sale
- strategic IP portfolio counseling including pruning and identification of technology holes
- competitor landscape assessment
- IP valuation
- IP monetization including institution and maintenance of licensing programs
- IP audits
- IP scrubbing of patents, copyrights and trademarks
- counseling regarding the sale or purchase of IP rights
- identification of target licensees and proof package generation
- evaluation of incoming IP-related notice letters and licensing requests
- advice regarding preliminary searching and filing of applications
- generation of corporate IP policy
- counseling regarding the effect of IP law or legislation
If a client requires IP-related services, we work in conjunction with lawyers from other practices within the firm to deliver a combination of services, both traditional and innovative. We frequently collaborate with Akin Gump’s other practices, including our corporate, investment funds, government contracts, private equity and financial restructuring practices, to provide value-added services to clients when IP assets are involved. We represent clients in structuring and negotiating the IP aspects of mergers and acquisitions, technology acquisitions, joint ventures and other types of strategic partnerships and alliances. Our lawyers also work on agreements in connection with investment funds, government contracts, university technology transfer and the sale of IP assets in bankruptcy.