Intellectual Property

Technology Transfer & Licensing

Whether you are a research institution, individual inventor, or a company interested in bringing a new technology to the market, it is critical to have counsel advising you on what a tech transfer or licensing agreement may mean from legal, business, and financial standpoints. Mintz Levin has decades of experience assisting universities, research institutions, and companies with negotiating technology transfer and licensing agreements that safeguard their interests.

Because many of our attorneys have worked at academic institutions and businesses that license new technologies, we can leverage our collective knowledge to work through even the toughest negotiations. Many of our attorneys and patent agents have advanced degrees in the sciences and engineering, and our IP and corporate lawyers regularly assist our clients in making connections between academic institutions, investors, and businesses. We routinely negotiate and prepare technology transfer agreements and know-how licenses in a variety of areas, including biotechnology, medical devices, pharmaceuticals, computer software, and electronics.

We advise both academic and industry clients on technology transfer matters, ranging from the identification of additional uses for technology, filing patents on technology, developing transfer programs, and defending inventorship and ownership disputes. We also handle licensing, procurement, outsourcing, sales, auctions, and technology transfer transactions that involve computers, software, networks, telecommunications equipment, and other intellectual property, such as trademarks, patents, and professional services.

Our attorneys continue to prosecute patents and assist with technology transfer and out-licensing deals for a number of high-profile institutions and universities. Additionally, a number of our attorneys also work with laboratories, handling like transactions. We have significant experience representing companies and charitable foundations in technology transfer agreements with the National Institutes of Health, Centers for Disease Control and Prevention, the US Army, and universities in the United States, Canada, Europe, and Australia.

Quick Facts

  • Attorneys with experience at the following:
    • Technology licensing office at MIT
    • Technology transfer office at Dana-Farber Cancer Institute
    • National laboratory conducting research and assisting in the transfer process
  • Several attorneys who have authored publications on various issues involved in the technology transfer process
  • Leverage our knowledge of intellectual property, technology, finance, corporate transactions, real estate, employment, and immigration to provide exceptional business-focused legal advice in relation to these complicated transactions
  • Experience includes countless small- and mid-sized licensing transactions and ranges up to the largest multinational transactions involving the most advanced technologies

Areas of Focus

  • Negotiate and prepare technology transfer agreements and licenses in the following areas:
    • Biotech
    • Medical devices
    • Pharmaceuticals
    • Software
    • Electronics

  • Advise academic and industry clients on technology transfer and licensing matters, including the following
    • Identifying additional uses for technology
    • Filing patents on technology
    • Developing transfer programs
    • Defending inventorship
    • Ownership disputes

Rankings & Recognitions

  • U.S. News & World Report and Best Lawyers (2014)
    • Ranked Tier 1 nationally in Biotechnology Law
  • Recognized for excellence by American College of Trial Lawyers, Chambers USA, Benchmark Litigation, and Super Lawyers
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Representative Experience

  • Served as lead patent counsel in the preparation and filing of several patent applications directed to the use of a compound derived from an herb used in ancient Chinese medicine to treat seizure disorders such as epilepsy and neuropathic pain. Issued patents, and pending patent applications have been licensed to a company developing novel therapies derived from natural products.
  • Serve as lead patent counsel for an academic teaching hospital. Prepare and prosecute patent applications with inventors that have joint appointments at the hospital and university in a wide variety of medical disciplines. Recent issued patents cover fields such as the treatment of Alzheimer’s Disease, the method of detecting sepsis, liver stem cells, and diagnosing metastatic breast cancer. Advise client on patent strategy, commercialization, and licensing negotiations.

Representative Clients

  • Brigham and Women’s Hospital
  • Brown University
  • California Institute of Technology
  • Dana-Farber Cancer Institute
  • Harvard University
  • Massachusetts Institute of Technology
  • Princeton University
  • Tufts University
  • Worcester Polytechnic Institute
  • Yale University