Jones Day’s Licensing & Technology Transactions Practice advises clients on the acquisition, transfer, and exploitation of technology and intellectual property assets through commercial transactions, such as licensing, strategic alliances, and joint development.

We have lawyers experienced in closing technology transaction deals in virtually all industries, including life sciences, such as biotechnology, pharmaceuticals, and medical devices; information technology, such as software, computer hardware, semiconductors, and liquid crystals; communications, such as telecom, broadband, internet, digital/electronic content, and networking; and others, including the chemical, polymer, steel, automotive, and airline industries . Many of our technology transaction lawyers are experienced in other areas of our Intellectual Property practice, such as patent prosecution, patent litigation , and copyrights & trademarks as well as outsourcing.

Our clients range from venture-backed start-ups to Fortune 500 companies, including nonprofit organizations. And our experience ranges from licensing deals involving a narrowly defined bundle of rights to complex, multiparty, multijurisdictional, and multitechnology transactions. The depth of our experience in most industries, coupled with our local presence in 14 countries (the U.S., China, Japan, India, Russia, and many European nations), allows us to meet the ever-increasing demands of the global marketplace and provide fast, efficient, practical legal services.

Our services include negotiation and drafting of a wide variety of agreements, including those involving:

Licensing – inbound, outbound, and cross	Employee confidentiality, IP rights, and noncompetition
Strategic alliances	Copromotion and sales agency
Joint ventures	Distribution and value-added reseller
Asset purchases and sales	Software maintenance and support
Development and joint development	Professional services
Contract manufacturing and research	Consulting
Research collaboration	Escrow
Patent, trademark, and copyright assignments	Hosting and network support
Security interests in IP and technology	Application service provider
Settlement	Confidentiality and nondisclosure
Clinical trials	Outsourcing
Supply	Internet web site linking, content, and terms of use

These services include counseling our clients on matters that may not result in an agreement but result in other types of work product. Some of these services include:

• Establishing formal global IP management programs and associated company-specific documentation.
• IP audits and associated audit reports.
• Designing and implementing licensing programs (licenses out of IP rights for revenue generation purposes).
• Counseling on the selection of the most desirable means to commercialize a technology, including the benefits and drawbacks of each potential strategy.
• Creation of spin-off companies to exploit technologies developed at nonprofit institutions.
• IP training for clients.
• Due diligence for buyers/investors of patents, trade secrets, or other IP rights that are purportedly owned by or licensed to the target company of an acquisition or investment or that will be a secured asset.
• Review of IP provisions (reps, warranties, assignments, licenses, noncompetes, and confidentiality) in mergers, acquisitions, and secured transactions.
• Creations of global privacy policies and implementation of related compliance procedures.
• E-commerce and internet-specific issues resolution, including issues involving trademark rights, DCMA, UCITA, UETA, and digital/electronic signatures.

Contact(s)

Thomas A. Briggs
San Diego
Tel: 1.858.314.1200
E-mail

Ann L. Gisolfi
New York
Tel: 1.212.326.3939
E-mail

Kevin D. Lyles
Columbus
Tel: 1.614.469.3939
E-mail

Warren L. Nachlis Ph.D.
New York
Tel: 1.212.326.3939
E-mail