Overview

Extracting Value from IP

Whether the transaction is a pure licensing arrangement, a joint venture, a strategic alliance, an acquisition or other arrangement, we help our clients protect and monetize their intellectual property assets. These arrangements can be as complex as the technology involved. 

Schiff Hardin’s IP Commercialization and Transactions team lawyers aren’t afraid to wade into transactions involving biological, chemical, mechanical, electrical and computer science fields. However, we also regularly deal with more creative or artistic intellectual property such as fine arts, web content, architectural designs and trademarks.

Representative clients have included Kraft Foods, The Chicago Bears, Newell Brands (formerly Newell Rubbermaid), Bunn-O-Matic Corporation, Dorel Industries, Franklin Electric Company, NiSource, The Cboe, and The Northern Trust Bank, among many others.

We have the background to approach transactions from both a business and technical perspective. Our main task is to work with the business team to understand the client’s business – and business objectives.  Our team also has the unparalleled technical experience and insights needed to work effectively with a client’s engineering and R&D staff. Once we have delved into the specifics of the intellectual property at issue and assessed its value to the client’s business, we can negotiate deal terms and draft concise and effective agreements to get the transaction closed.

Tailored Licensing Solutions

We have significant experience in negotiating and drafting licenses and other agreements for the commercial use of intellectual property rights. Our licensing experience extends to a variety of industries, including consumer goods, retail, electronics, publishing, gaming, media, entertainment, food/beverage and financial services. We have also represented clients in the entertainment industry and have considerable experience with celebrity licensing for appearances, sponsorships and endorsements.  In the securities industry, we have substantial experience with indexes that underlie exchange-traded structured products, as well as off-exchange derivatives.

Experienced in patent licensing and patent portfolio management, our team regularly drafts and reviews complex licensing agreements for sophisticated, cutting edge technologies. We also regularly advise clients on trademark licensing matters and the broader areas of merchandising programs and brand management initiatives.

We have represented parties in significant transactions involving world-famous brands. Our experience dealing with major brand licensors lets us readily explain typical licensing options and possible compromises that have worked for other parties to our clients.

Practical Strategic Alliance Advice

We regularly assist clients in partnering with third parties that can help them expand their existing businesses or pursue new opportunities and advise them on the best way to structure effective collaborations.

Strategic alliance arrangements can include joint ventures involving the creation of a new legal entity, partnering arrangements, and licensing collaborations, as well as product development and marketing alliances. We also have experience with joint development arrangements. We help clients navigate tricky issues relating to their rights and obligations with respect to jointly developed inventions and improvements.

Successful Acquisitions and Technology Transfer

Our lawyers are known for closing deals in a cost-effective and timely manner. We have experience preparing a wide variety of agreements commonly used in the transfer of rights in patents, trademarks, copyrights, and trade secrets in a broad spectrum of commercial and technical fields.  

In addition, we routinely work in conjunction with our nationally respected corporate and securities, mergers and acquisitions, and venture capital and private equity practices on transaction matters, including the negotiation and preparation of tech transfer agreements and intellectual property ownership strategies.  

Our intellectual property lawyers form an integral part of our due diligence teams for broader commercial transactions. We have investigated and evaluated the intellectual property aspects of acquisitions, including deals such as Kraft Foods North America’s purchase of Cadbury; the acquisition by Newell Co. (now Newell Brands) of Rubbermaid Incorporated, the worldwide $800 million stationery products businesses of The Gillette Company, and numerous other transactions throughout the world involving medical companies, software companies, consumer products companies and brand names.

Comprehensive Advice for Company Growth

We work with a diverse group of clients in different stages of development and need.

For start-up companies, we counsel founding teams on formation issues and prepare them to seek financing. Taking a proactive approach, we help our clients first identify potential financing sources and then negotiate terms to obtain the funding and resources needed to accelerate their business growth. 

For mature companies, we provide advice on protecting and managing their intellectual property portfolios.  We help them put contracts in place that will reduce the legal risk associated with their businesses, and effectively address advertising, online contracting, copyright, trademark, patent, employment, privacy and data security issues.