Technology Transfer

Key Services

The Technology Transfer Team provides an array of services:

Patent Strategy. We understand that at each institution and at various times, technology transfer has many objectives, and we know how to craft a patent strategy to meet those objectives. Not only do we bring the technical and legal understanding necessary to craft a legal strategy for each invention, we provide deep industry knowledge of many key players that conduct substantive research activity in academia and that have a great interest in licensing those activities. As such, our patent strategies are correlated with business and licensing strategies from the earliest stages.

Patent Prosecution. We counsel clients at every stage within the lifecycle of a patent, from disclosure through issuance, maintenance, and licensing or enforcement. We understand the complex technical disclosures generated in academic laboratories, as well as the special time pressures of academic publishing and grantwriting. We strive to collaborate with the investigators by respecting their deadlines and time commitments. We are well versed in managing inventorship disputes that are unique to collaborations between investigators at different institutions. We also understand the organizational issues involved in large patent portfolios for academic staff members who might not be permanently placed at the institution.

License Negotiation. Not only do we understand the technical and patentability aspects of technology transfer related to a broad range of technologies, but we have developed strategies to aid technology transfer offices in successful licensing programs. We have extensive experience with the terms and negotiations related to master research agreements, sponsored research agreements, and licensing agreements. Furthermore, we have experience in and strategies for handling difficult negotiations that may include the prospect of litigation.

We are well versed in the licensing or enforcement of intellectual property portfolios, large and small. We have experience licensing a wide variety of patented inventions, unpatented technology, trademarks, and copyrighted materials for universities and health care entities, in areas that include engineering disciplines, biotechnology, medical devices, computer science, and many other arts.

In this same regard, we have assisted professors who are entering into publishing agreements for textbooks and other materials. This experience includes drafting license agreements to address rights granted to the federal government pursuant to the Bayh-Dole Act and opining as to the scope of such rights. Additionally, we have experience drafting license agreements to address EAR/ITAR and related export control issues, including deemed exports for international technology transfer agreements and domestic software license agreements involving foreign national usage.

Emerging Businesses / Startup Companies. Quarles & Brady has for decades represented new and young technology companies, which might have few assets beyond intellectual property or a license to intellectual property. Our team has helped these companies, from creation to funding to sale. For example, Quarles & Brady’s Private Equity / Venture Capital Team works with clients at every phase of the investment cycle: from acquiring or providing early “seed”- or “angel”-level capital, to investments in established businesses and industries.

Representative services include

  • Business formation and tax-effective investment structures.
  • Private investments.
  • Recapitalizations.
  • Equity rights and transfer restrictions.
  • Subordinated debt / mezzanine financing.
  • Exit strategies.
  • Follow-on investments.

We tailor our services to the needs of our clients, in both how we help structure the potential investment itself and the manner in which we staff and bill for our services.

Intellectual Property Enforcement: Quarles & Brady’s Intellectual Property Litigation Team has an extensive history representing research institutions looking to enforce intellectual property rights (or to defend against others' enforcing rights). Our IP Litigation Team has secured favorable outcomes in federal courts across the country and in arbitrations or mediations involving research institution IP rights and licenses. We understand the special challenges confronting universities and health care organizations when seeking to enforce rights (or defend against infringement allegations) and can work with clients to craft a strategy with each stakeholder in mind.