Leading businesses and investors in the global economy turn to Ropes & Gray’s team of international, IP and technology attorneys to protect, commercialize and maximize the value of their technology and IP assets. We have extensive experience helping clients with valuable innovations enter into strategic arrangements with third parties and develop new commercial opportunities for those assets, or extract value from those assets in other ways. On the ground across three different continents, our IP transactions professionals provide clients with around-the-clock, top-tier IP support on an international stage.
We help a range of clients from mature U.S.-, Europe-, and Asia-based multinational corporations with significant offshore engineering, manufacturing, marketing, sales, and service organizations, to start-up companies based in the United States and elsewhere seeking new markets for their products and services. We routinely work in the United States, European Union, India, Japan, China, Korea, Latin America and Israel.
We assist clients with:
- Formation and operation of joint ventures and other structures that support third-party business partnerships dealing with innovation assets
- Negotiation and drafting of strategic licenses and collaborations
- IP-backed debt financing and securitization
- Structuring IP assets and licenses to support merger, acquisitions and reorganizations
- Advantageous sale of selected IP assets
- Tax optimization of licensing structures
- Assessing IP portfolios to determine value of licensing and strategic partnerships
- IP-driven corporate structuring and restructuring across borders, including remote IP holding company spinouts
- Advice about the distribution and licensing of products in accordance with the legal and regulatory requirements of various countries
- Protection of IP and technology assets
- Managing international technology transfers and cross-border transactions
- Formulation of optimal core supply chain and distribution channel provisions
Drawing upon our intellectual property, corporate, litigation and regulatory resources, we provide strategic guidance to companies in a wide variety of manufacturing, life sciences, technology and service industries. We offer companies seeking new commercial arrangements for their existing intellectual property advice about business partnerships that extract the maximum value of innovation assets in markets around the world.
Our attorneys understand the complex business and financing needs of multinational technology businesses. Working with companies at every stage of development, we provide guidance regarding financial structuring, collaboration and other issues. Our advice includes:
- Advised Dunkin’ Brands Group, Inc. on its successful refinancing of its senior secured credit facility with a new $2.4 billion securitized financing facility based substantially on securitization of intellectual property and related revenue from IP-based licensing and franchise arrangements.
- Represented Marquee Brands LLC in its acquisition of British men’s clothing brand Ben Sherman® and its related intellectual property assets from Oxford Industries, Inc. Sponsored by Neuberger Berman Private Equity, Marquee Brands is a brand acquisition, licensing and development company.
- Represented Genzyme, a Sanofi company, in the negotiation of a strategic collaboration agreement with Voyager Therapeutics to discover, develop and commercialize novel gene therapies for severe central nervous system disorders, under which Genzyme made $100 million of upfront commitments to Voyager (including $65 million in cash, a $30 million equity investment and additional in-kind contributions) and potential development and sales milestone payments totaled $745 million.
- Advised Stanford University’s Office of Technology Licensing on intellectual property and licensing issues. Recent work involved revamping their standard forms to handle more complicated licensing arrangements that include a bundle of technology and intellectual property rights, and not just rights under patents, and providing strategic advice on negotiating the myriad issues such arrangements present.
- Represented the National Football League (NFL) in a series of transactions as part of a repositioning of NFL On Location (NFL OL), its premium events and hospitality business. The NFL partnered with Bruin Sports Capital and RedBird Capital Partners, who invested in growth capital and assume operational control of the business.
- Advised Sarepta Therapeutics on its exclusive license and collaboration agreement with Summit Therapeutics plc granting Sarepta rights in Europe, as well as in Turkey and the Commonwealth of Independent States.
- Handled a complex patent licensing deal between Rovi Corporation (now TiVo Corporation) and Intellectual Ventures (“IV”), which resulted in two of the world’s leading media and entertainment patent portfolios being brought together under a unified, comprehensive licensing program for providers of over-the-top (OTT) digital media services. We assisted Rovi in drafting and negotiating complex licensing provisions, from payment calculations to maintenance and enforcement of patent rights.
- Represented Pfizer in its global collaboration agreement with Merck KGaA to develop and commercialize anti-PD-L1 antibodies to treat tumors. This transaction won the LES 2015 “Deal of Distinction Award” for the life sciences sector. It included an upfront payment to Merck of $850 million and $2 billion in regulatory and commercial milestones.
- Represented a global information technology company on intellectual property issues related to the international separation of the company into the enterprise software services business and the printing and personal systems business. The team provided strategic advice on the allocation and licensing of trade secrets, copyrights and trademarks, counseled on the creation and structure of a trademark holding company for brands important to both businesses, and advised on template trademark licenses for both businesses post-split.
- Ropes & Gray represented Progenity, a provider of complex molecular and specialized diagnostic testing services, in a series of technology transactions.
- Advised Juno Therapeutics, Inc., a Seattle-based, clinical-stage biotechnology company, in the drafting and negotiating of supply chain agreements.