Often, intellectual property (IP) rights are exploited by commercializing the technology protected by those rights. That said, even if a company lacks the resources to directly commercialize its technology, the company may still derive value directly from its IP rights by licensing or selling the IP rights to others. Thus, the strength of a company’s IP portfolio can greatly impact the overall value of the company. In addition, being aware of the intellectual property rights of others enables companies to avoid disputes by, e.g., making design choices and changes to their technology that help to marginalize or eliminate the impact of such IP rights.
The attorneys at ESF are experienced in analyzing IP issues and providing opinions that inform and guide business decisions. Our attorneys have played instrumental roles in managing and monetizing IP portfolios for large and small business clients, working with them to optimize opportunities for generating value from their innovations by identifying and protecting proprietary subject matter. We counsel clients in not only valuing their own IP rights, but also in evaluating risks associated with IP rights of others.
Our clients rely on our opinions to make fundamental decisions regarding every level of business activities. The attorneys at ESF provide counseling on development of corporate policies and procedures relating to the procurement of patents and trademarks and preservation of trade secrets. We provide opinions on freedom to operate, validity, infringement and non-infringement, design-around, third party rights, patent and trademark ownership, and inventorship matters. We also counsel clients through early-stage product development, risk management and litigation avoidance, prior art and trademark clearance searches, patent and trademark disputes and enforcement, and potential and ongoing litigation. Our goal is to help clients protect their own IP and to avoid potentially costly conflicts or enforcement issues that might arise from the IP of others.
Licensing & Other IP Transfer Agreements
The attorneys of ESF assist companies with the strategic transfer of rights in proprietary technologies and trademarks. Our attorneys advise clients on the procurement, sale and licensing of IP rights, including negotiating and drafting agreements including intellectual property asset purchase and license agreements, non-compete agreements, nondisclosure and confidentiality agreements, independent contractor agreements, employment and consulting contracts, cooperative research and development agreements, license option agreements, lien and security interest agreements, material transfer agreements, and research and development agreements.
Mergers and Acquisitions
Our attorneys frequently work with clients who acquire companies, assessing the status of the acquired company’s intellectual property assets as well as the acquired company’s potential liabilities. The firm provides due diligence services to businesses interested in acquiring intellectual property assets or in participating in mergers and acquisitions. Our attorneys evaluate the strength and enforceability of the subject IP portfolio in light of the objectives of the client. We strive to provide clients with an understanding of the scope, enforceability, and risk/reward issues surrounding such intellectual property transactions so they can engage in intelligent risk management.
ESF attorneys work with all levels of clients – from start-ups to multi-national companies – in guiding them through their IP matters. Our IP transactions experience and resources assist clients in every aspect of IP portfolio commercialization and management. We help clients develop IP portfolios that align with their business objectives, working with the business, legal, and technical staffs of large corporations, or directly with the proprietors of smaller businesses and start-ups. We assess existing and developing portfolios to ensure that business plans are structured around products with strong IP protection and that avoid infringement.