Overview
Intellectual property plays a critical role in business and in the corporate and transactional matters that are key to growth. Ropes & Gray has one of the broadest and deepest IP transactional practices in the world with 11 partners on three continents focusing on IP-intensive transactions across a wide variety of 21st century industries, including life sciences, health care, technology, media and telecom, financial services, retail and consumer products. Our team consists of corporate attorneys focused on helping clients establish corporate structures, complete strategic and commercial transactions, and execute against long- and near-term business priorities in circumstances in which IP assets are critical to the structure, the deal, and the goals.
We assist clients at all stages of the business cycle with the formation and financing of new ventures, the restructuring, financing, and commercial operation of established businesses, and the sale and acquisition of companies or defined assets, products, and services. Our attorneys are exceptionally well versed in handling structures, transactions, and operations where proprietary brand, media, technology, data, content, methodology and other proprietary intangible assets are key to achieving the client’s goals. Our attorneys regularly lead matters focused on:
Transactions
- Technology development, acquisitions and divestitures
- Collaborations, strategic alliances and joint ventures
- IP licensing for complex technological and pharmaceutical assets
- Commercial agreements, including co-promotion, outsourcing, manufacturing and supply
- Specialized IP holding company creation, asset monetization and debt structure strategies
- IP litigation settlements
Strategy
- Patent portfolio evaluation and strategy
- Patent invalidity/non-infringement opinions
- Strategic brand management
- Trademark and copyright protection
Deal Support
- Structuring and operationalizing mergers, acquisitions, divestitures, spinoffs and reorganizations
- IP diligence
- International technology transfers and cross-border transactions
Experience
Transactions:
- Represented Adaptimmune in its strategic collaboration with Roche Group’s Genentech Inc. worth up to $3.3 billion to research, develop and commercialize cancer-target allogenic T-cell therapies.
- Represented Shape Therapeutics in a strategic research collaboration and license agreement with Roche worth up to $3 billion to use Shape’s RNA-editnig platform and adeno-associated virus technology to identify and develop treatments for Alzheimer’s disease, Parkinson’s disease and other neurodegenerative diseases.
- Represented Blackstone in a $2B strategic financing collaboration with Alnylam to accelerate the advancement of RNAi therapeutics.
- Represented CStone Pharmaceuticals on its $1.3B global strategic partnership with biotech EQRx to out-license two late-stage immune checkpoint inhibitor therapies for development and commercialization outside of Greater China.
- Ropes & Gray represented Boehringer Ingelheim (BI) in reaching a global agreement with AbbVie to jointly develop and commercialize a biologic antibody for the treatment of psoriasis.
- Advised Innovent Biologics Inc., a leading bio-pharmaceuticals company based in China, with regard to a collaboration of at least three cancer treatments with Eli Lilly and Company, a global healthcare leader.
- 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.
- Advised Roku on various settlement agreements, under which Roku typically obtains broad licensing rights to use certain patents with respect to its product line.
- Represented Akebia Therapeutics in an exclusive licensing agreement with Janssen Pharmaceutical, NV, one of the Janssen Pharmaceutical Companies of Johnson & Johnson, under which Akebia in-licensed a portfolio of well-characterized HIF pathway compounds with potential applications across multiple therapeutic areas.
- Ropes & Gray represented Boehringer Ingelheim (BI) in reaching a global agreement with AbbVie to jointly develop and commercialize a biologic antibody for the treatment of psoriasis.
- Ropes & Gray served as lead outside counsel to Pfizer, Inc. in connection with its ground-breaking PD-1 oncology collaboration with Merck KGaA. The transaction was honored with the “2015 Deal of Distinction” Award in the life sciences category by the Licensing Executives Society.
- Advised Innovent Biologics Inc., a leading bio-pharmaceuticals company based in China, with regard to a collaboration of at least three cancer treatments with Eli Lilly and Company, a global healthcare leader.
- 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 InFront Sports & Media AG its purchase of Omnigon Communications LLC, a New York-based multinational provider of digital solutions to leaders in the sports, media and entertainment industries. In addition Ropes & Gray has handled complex outsourcing, joint ventures, technology and IP spinouts, business restructuring and asset sales.
- 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.
- Represented the National Football League (NFL) in its spinout and repositioning of NFL On Location (NFL OL), its premium events and hospitality business.
Strategy:
- Represented Takeda Pharmaceuticals in numerous licensing and collaboration agreements valuing over $6B since 2018.
- Provides ongoing strategic advice to Luxury Brand Partners including global trademark policies and procedures, trademark clearance and prosecution, portfolio management, due diligence, and commercial transactions.
- Represents Butler, Shine, Stern & Partners (BSSP), a major marketing communications agency, in a variety of advertising, commercial, and intellectual property matters, including negotiating advertising services agreements, conducting copy review and rights clearance, and counseling the agency on FTC truth-in-advertising compliance.
- Advised Cirque du Soleil on the IP and publicity rights structure for the Cirque-NFL collaboration, the NFL Experience Times Square.
- Advised ethris GmbH, a growing biopharmaceutical company based in Munich, Germany, on their patent portfolio strategy, licensing and collaboration strategies and strategic partnerships related to mRNA modification and delivery techniques for treatment of a wide variety of illnesses.
- Advising TSG Consumer Partners with their portfolio management and enforcement of the TSG mark. We also represent the investment arm of TSG, LLC and handle due diligence for private equity transactions, which included TAM Beauty, Glanbia, thinkThin, and Backcountry.com.
- Advised Rovi Corporation on patent strategy relating to its acquisition of TiVo Corporation.
Deal Support:
- Advised Bain Capital on the $18B sale by Toshiba, which included advising on key transactional risks relating to Toshiba’s complex joint venture structure that governs its fabrication facilities and its critical patent license agreements with competitors.
- Represented Francisco Partners and TPG Capital on IP and technology matters in connection with their $4 billion acquisition of Boomi.
- Represented TPG in its definitive agreement with Intel Corporation to establish McAfee, a newly formed, jointly owned independent cybersecurity company. The transaction created one of the world’s largest pure-play cybersecurity firms.
- Represented Silver Lake and its portfolio company, Weld North, in intellectual property matters and strategy in connection with a significant investment in Weld North Education, the leading K-12 digital curriculum technology company in the U.S. serving ten million students and seven thousand school districts, by a coalition of investors including Onex Partners V, Onex' US $7.2 billion platform fund.
- Represented Baring Private Equity Asia in its acquisition of a 35 percent stake in TELUS International. The agreement valued TELUS International at CAD1.2 billion, with TELUS Corporation shareholders retaining a 65 percent interest in the business.
Awards
- Chambers Global 2022: The World’s Leading Lawyers for Business – Intellectual property group recognized in the Asia-Pacific region, and in China, South Korea and the U.S., with multiple attorneys ranked as leaders in the field.
- Chambers USA 2023: America’s Leading Lawyers for Business – Intellectual property group recognized in California, Massachusetts and New York, with multiple attorneys ranked as leaders in the field.
- Chambers Asia 2022: Asia’s Leading Lawyers for Business – Intellectual property group recognized Asia-wide and in China and South Korea, with multiple attorneys ranked as leaders in the field.
- Legal 500 US 2019 – Ranked as a leading “Patents: Licensing” practice with multiple attorneys ranked as recommended in these fields.
- Legal 500 Asia Pacific 2019 – Ranked in China and South Korea as a leading "Intellectual Property – Foreign Firms" practice.
- U.S. News & World Report: Best Lawyers “Best Law Firms” Report 2019 – Recognized as having the leading patent law practice in the United States and top ranked nationally in information technology law, trademark law, patent litigation and intellectual property litigation, trademark law, and biotechnology law.
- The Best Lawyers in America 2019 – Multiple intellectual property partners recognized as leaders in their field.
- Asian Legal Business IP Rankings 2019 – Ropes & Gray listed as a leading law firm for patents and copyright/trademark in China.
- Vault Law Firm Rankings 2019 – Ranked among the top 15 Best Law Firms for intellectual property.
- Who’s Who Legal 2019 – FiveIP attorneys designated on this elite list for patent law.
- LMG Life Sciences Guide 2018 – Named “Licensing & Collaboration Firm of the Year” and IP and Licensing practice recognized, with multiple attorneys named “Life Science Stars” for IP.
- World Trademark Review’s WTR1000 2019 – Ranked as a top firm for trademark law, with several attorneys recognized as leaders in their fields.
- IAM Patent 1000 2019 – Ropes & Gray ranked nationally and in California, Illinois, New York, Massachusetts, South Korea, China and internationally with multiple partners recognized.
- Managing IP’s IP Stars 2019 – Ranked in California, China, Massachusetts, New York and nationally in the US. Multiple attorneys listed as “IP Stars.”
