Intellectual Property - Representative Licensing Experience
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Bryan Cave attorneys have handled numerous licensing matters in all IP areas; a representative listing follows.
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Patent/Trade Secret/Know-How
For manufacturers of consumer electronics devices: end-user license agreements, licenses in of software, content, and technology, and licenses out of technology
License by an EP entity of its proprietary platform technology for collaborative research and development with a major US pharmaceutical company, with special attention paid to differing invention ownership laws in the EP and the US
A major patent licensing program for an educational institution concerning a synthetic antibiotic
License in of development software for use by a developer to create an application that was licensed out in the mobile telecom industry
For a start-up: trade secret and patent licenses concerning nanotechnology for commercialization by Fortune 50 firms in the consumer products and pharmaceuticals industries and for use in connection with currency security features
For one of the world’s largest contract manufacturers of electronics: licenses in of technology for manufacturing the hiring party’s products, with special attention to allocation of rights to newly developed technology
Licenses out to chemical companies in connection with their synthesizing compounds for a major pharmaceutical company
License in from an EP educational institution concerning monoclonal antibodies used in testing for cardiovascular disease, and sublicenses out to diagnostic companies in different fields
Licenses for development of medical diagnosis software
License in to a major US pharmaceutical company from a company based in Asia, with English law being chosen as neutral for the contract
Biotech technology licenses for an international agricultural products company
For a consulting and technology solutions company: license and software integration agreement with a governmental entity, and related licenses with numerous technology providers
Licenses in of technology for medical foods and nutritional supplements from domestic and international developers of naturally-sourced medical foods and nutritional supplements
Patent and technology licenses concerning computer software and systems (e.g., for operating businesses), the Internet and Internet-related technology, email, and organizing and presenting information
License out by a major pharmaceutical company of a particular drug form to a generic pharmaceutical company
For an insurance company: patent licenses for software to be used by its sales force
Licenses in of patents from educational institutions concerning power metering and location identification
License in for a major pharmaceutical company concerning controlled-release compositions as part of a transfer of its patent assets
Licenses for development of financial and communications management systems in telecommunications and energy industries
Licenses in of patents from educational institutions and commercial enterprises concerning plant-made pharmaceuticals, and licenses out to commercial enterprises
For software developers: end-user licenses; licenses in of pre-existing components for incorporation into products; and licenses out to government and educational entities
For consultants: allocation of intellectual property license and ownership rights developed for their clients in multiple industries, including logistics, transportation, software, healthcare, medical devices, and consumer electronics
Patent and know-how licenses concerning fire prevention systems, mining equipment, biofuels, skateboards and scooters, asphalt paving technology, school bus safety equipment, and clothing
For educational institutions: commercialization of research through licensing in compliance with the Bayh-Dole Act and relevant university policies
Licensing for strategic alliances and joint ventures, including licenses in of technology, allocation of competitive IP exploitation rights to the venture and between venturers, and exit planning
Trademark
For a major manufacturer of toy action figures: licenses with motion picture studios, publishers, NASCAR, and major professional sports leagues and their players’ associations
For a major motorcycle aftermarket manufacturer: license in for use of a well-known mark on its products
For a school in a state university system: licenses out of the use internationally of its mascot in connection with educational outreach project
For an international footwear company: co-branding agreements, joint promotion agreements, product placements, and other collaborative efforts, with major brand owners and motion picture studios
For a major US home furnishings retailer: licenses with US and international manufacturers, and joint venture and co-branding agreements
For a manufacturer of stylized footwear: licenses out to video game developers/manufacturers to include depictions of footwear in games
For a global retailer of toys and infant and baby products: licenses with third parties to allow the client to expand its trademark portfolio with relatively small expense
For a world-renowned dance company: licenses out of their source-indicating choreography for live performances by third parties and for use in advertisements and on consumer products
For a major charity whose goal is to bring clean and safe drinking water to people in developing nations: licenses out of its trademarks on a variety of products, a portion of the sales revenue of which goes to the charity to further its work
For a major manufacturer of HVAC equipment: licensing in connection with acquisition of a company and its portfolio of internationally well-known brands
For an international appliance manufacturer: licenses out of its world-famous brands
For a major international food producer: brand licenses
For consumer products manufacturers: licenses and other agreements with major league sports teams and stadium owners concerning sports stadium naming rights
For an international hair products company: licenses with distributors in over three dozen countries
For major apparel manufacturers: US and foreign licenses in and out
For sporting goods manufacturers: US and foreign licenses in and out
For US beverage companies: licenses out
Copyright
For authors and publishers: licensing and distribution of academic, professional, and scientific content for print and electronic publishing
For an advertising agency: licenses to use pre-existing music and performances in advertisements
For an international hair products company: licenses with distributors in over three dozen countries
For a well-known visual artist: licenses to use his images on posters
For vendors of information services: licensing of proprietary databases
For an international supplemental insurance company: licenses for insurance policies
For a major not-for-profit organization: licensing out of a database to for profit organizations
For a not-for-profit organization: licensing out of its photographic collection to an online retailer
Other
For a well-known international luxury goods company: license to use the name, likeness, and other indicia of a deceased celebrity
For a major toymaker: licenses with professional baseball, football, and hockey players, NASCAR drivers, and motion picture actors for use of their names, images, and identity on toy action figures
For a famous professional baseball player: endorsement and other license agreements for the commercial use of his name, identity, and persona