Joint research, development and joint ventures

Our attorneys are skilled in advising technology joint ventures regarding formation of entities, development agreements and intellectual property counseling. We have worked for nonprofit research institutions engaged in leading-edge research and commercialization. We structure business alliances in research, development, manufacturing and distribution, acquisition and disposition of business units and technologies, perfection and protection of intellectual property rights, and tax and regulatory counseling and compliance.

Innovative technology development by industries within the technology sector occurs in many types of companies, from startups and university spin-offs to well established publicly-held companies. Whether a technology sector business is emerging or well established, we can help successfully manage the legal issues that affect its ongoing operations. Porter Wright assists technology sector companies in the early stages of growth to start with a solid foundation for success and protect that foundation for the future. If a company is starting out in the industry, we can help select an organizational and operational framework that makes sense for its particular business objectives; structure business alliances in research, development, manufacturing and distribution; acquire, protect and exploit intellectual property rights; and meet regulatory obligations. The large investment in research and development makes protecting intellectual property rights critical.

Porter Wright attorneys help businesses maximize technology endeavors and minimize risks. We work with entrepreneurs and Fortune 500 companies to protect intellectual property, trademarks and branding domains.

Specific areas include:

Collaborative arrangements

  • Joint research and development agreements
  • Joint ventures and other industry alliances
  • Contract manufacturing agreements
  • Product distribution agreements
  • Import/export of pharmaceuticals or devices
  • Confidentiality and non-disclosure agreements

Intellectual property

  • Confidentiality and non-disclosure agreements
  • Joint development technology agreements
  • Patent, trademark and copyright licensing
  • Purchase and sale of intellectual property rights in technology
  • IP protection strategies — best practices
  • Technology transfer
  • Contract research and development
  • University technology transfer/faculty agreements

Corporate finance

  • Entity structuring and organization
  • Financing — venture, private equity, industry partner
  • Mergers and acquisitions

Our experience includes:

  • Assisted a telecommunications client in cross licensing its technology with a Taiwan-based multi-national electronics engineering and manufacturing company’s patented devices. Our representation involved negotiating and preparing supply and manufacturing agreements to maximize the two entities’ technologies, as well as preparing collaboration and cooperation arrangements in order for the parties to jointly develop and exploit each others technologies.
  • Worked with a client that develops and manufactures fuel-injection systems used in diverse industries in licensing of its patents. We have developed and negotiated joint development agreements between our client and other technology industry players for development of products to lead to improvements in fuel emissions, and advised our client concerning profitability analysis.
  • Assisted a client with licensing its patented radiator core technology under a limited non-exclusive license to manufacture certain products in restricted territories, and structured royalty rates, and in another context, crafted an indemnity agreement for potential infringing patent claims.
  • Assisted a biotechnology client in protecting and exploiting its innovative biotech devices and sensors. Our representation consisted of filing and prosecuting multiple patents for the client’s methods and devices as well as preparing licensing, development, manufacturing and consulting agreements with entities and individuals based in India, Taiwan and the United States. Additionally, our representation included lobbying Congress and proposing legislation on our client’s behalf in order to facilitate legislative provisions necessary for our client’s full exploitation of its biotech devices.
  • Assisted another biotechnology client in preparing a reseller/licensing arrangement with a competitor selling similar and competing products. This representation involved negotiating and preparing cross-licensing agreements for each party’s technology and intellectual property as well as distribution rights and international exclusivity arrangements.
  • Prepared and negotiated contracts for the development and commercialization of fuel cell technology, including allocation of ownership of existing intellectual property and future improvements, for a joint development and commercialization project for a research institute.