Research Institutions

High-Profile Representations

Our attorneys have been involved in numerous high-profile technology matters, of which a few are given here.

Wisconsin Alumni Research Foundation (WARF) Stem Cell Patents

Quarles attorneys wrote and obtained broad-based patents on Dr. James Thomson’s groundbreaking research on primate and human embryonic stem cells, which IP Worldwide called “one of the 10 patents that changed the world.” This portfolio has now grown to dozens of patents and is still managed by Quarles attorneys. The team of Quarles professionals who practice in this area has also grown, to 12, of whom nine have doctoral degrees. These partners, associates, patent agents, and patent engineers form a team working on stem cells and related technologies in the areas of cell differentiation, DNA and protein engineering, microbiology, and molecular biology inventions. Quarles has obtained over 100 issued biotech patents for research institution clients.

Medical Imaging Licensing Successes

Quarles attorneys have been working in the medical imaging arts since the 1980s. As a result, we have a dedicated team of professionals with academic research, and industry experience that is specific to medical imaging. From magnetic resonance imaging (MRI) to positron emission tomography (PET) imaging, ultrasound imaging, optical imaging, and beyond, Quarles understands the technology and the commercial industry.

For example, when an academic, research-institution client sought to create a new business around fundamental research in the medical device area, it called Quarles. We helped the client develop a business model, secure the IP assets necessary to support the business model, create a separate for-profit entity to execute on the business model, negotiate licensing terms to non-competitors to expand the business model, and successfully enforce the IP assets against one of the world’s largest diversified manufacturers, which was infringing the patents secured by Quarles. The company is now on the cusp of providing a second return on investment to the institution, that far exceeds the original, anticipated return.

Wisconsin Institutes for Discovery

Beginning in 2006, Quarles acted as owner’s counsel in the development of the Wisconsin Institutes for Discovery Project, a $200 million, public/private microbiological research facility on the University of Wisconsin campus in Madison. In that capacity, Quarles drafted the multiparty, integrated project delivery (IPD) contract that guided the successful design and construction of that facility, which was the first project in Wisconsin and one of the first in the nation to be delivered using IPD.

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