Patent - University Research and Technology Transfer
Helping you bring groundbreaking research from the lab to the market
Capabilities at a glance
- We counsel clients at every stage of the life cycle of a patent, from disclosure through issuance, maintenance and licensing or enforcement.
- Decades of representation of research institutions engaged in technology transfer, dating to before the passage of Bayh-Dole.
- A specially crafted legal strategy for each invention, built on deep industry knowledge of the key players conducting substantive academic research in your area and an understanding that the goals of universities in obtaining patents are unique and do not always follow the same goals as private companies.
Deep experience supporting those at the forefront of innovation
Since before the passage of the Bayh-Dole Act, Quarles has been representing research institutions engaged in technology transfer. We remain at the forefront of innovative solutions for institutions engaged in cutting-edge research. Our attorneys understand all aspects of tech transfer, from technology evaluation and patent prosecution to licensing and patent enforcement. We represent clients in the formation of patent strategies, patent prosecution, license negotiation, intellectual property and patent licensing, business startups, intellectual property enforcement and patent litigation, providing comprehensive legal services that successfully move technology from the lab to the marketplace and fully protect it. Informed by extensive industry experience and technological backgrounds, our lawyers have helped organizations generate millions in returns from their portfolios. Given this breadth and depth of experience, our patent team obtains patents with an eye toward universities’ commercialization goals: We know the applications we prepare may need to simultaneously protect a licensee from competition while also ensuring a royalty to the university.
Dynamic legal support for research institutions and businesses of all kinds
Our technology transfer attorneys have helped research institutions bring groundbreaking research to market, such as human stem cell technologies and medical imaging advancements. We have experience in all types of patent law, with clients of many different shapes and sizes in a range of fields. Over the years, universities, foundations, research hospitals, health care organizations, museums and clinical research organizations have all brought a wide array of products and services to market with our assistance. For new and young technology companies, where IP assets are of paramount importance, we focus on supporting our clients in acquiring and structuring investments of that vital early capital, offering guidance from creation to sale. We help our clients make critical decisions on when and how to file for patent protection on their inventions. This includes not only invention disclosure review, but innovative strategies for positioning early-stage or cross-disciplinary innovations for the best outcome at the patent office and the license negotiation table.
Experience
- Efficient and practical invention disclosure review
- Patent strategy
- Patent preparation prosecution, both domestic and foreign
- License drafting and negotiation
- Intellectual property enforcement
Successes
- Assisted a large research university in developing an IP portfolio relating to a foundational biotech technology, which was then licensed to a startup that was subsequently acquired in a large exit. We effectively assisted the client in demonstrating early value by overcoming patent eligibility questions and quickly getting claims issued, while preserving claim scope in subsequent child applications.
- Navigated a dispute between a university and an exclusive licensee regarding filing of international applications and validations in key countries, preserving rights for our client and positioning for future royalties or infringement, while limiting out of pocket costs for the client.
- Negotiated a favorable hybrid (materials and patents) exclusive license, involving a Bayh-Dole waiver, from a university to a large international company.
- Assisted a university foundation in navigating a market lockup dispute with a licensee and its underwriter, when the foundation owned a small equity stake in the company pre-IPO.
- Drafted license and other agreement templates for over a dozen major research institutions.
