Hall Of Fame

Firms To Watch: Patents: licensing

BakerHostetler has a strong practice, capable of handling patent licensing matters with particular regard to the tech and life sciences sectors.

Patents: licensing in United States

DLA Piper LLP (US)

DLA Piper LLP (US) acts on behalf of global companies involved in numerous industries and sectors in relation to patent transactions, technologies regarding patent licensing as well as transactions involving covenants. The firm advises clients on patent licensing transactions to settle patent litigation, also possessing expertise in the creation, management and monetization of patent portfolios. Notably, the firm also advises technology clients on patent licensing in connection with M&A, which includes the sale of assets, among others. Its matters encompass a variety of jurisdictions, such as the UK and Germany, with an ability to handle issues on a global market scale. Boston’s Larissa Bifano is experienced in patenting and licensing artificial intelligence driven systems and methods for clients. Victoria Lee, who is based in Silicon Valley, contributes a wide range of expertise, including strategic IP counselling, licensing agreements and technology spin-outs from universities. Alongside them, Sean Cunningham, who is based in the firm’s San Diego office, and Gina Durham, who is based in the firm’s San Francisco office, also lead the team. San Diego's Lisa Haile concentrates on patent protection and IP transactional matters.

Practice head(s):

Sean Cunningham; Gina Durham; Victoria Lee; Larissa Bifano


Other key lawyers:

Raymond Miller; Jeffrey Aronson; Lisa Haile


Key clients

Nanotronics Imaging


STATS Perform


Halma Holdings Inc.


Precision NeuroScience, LLC


Novity


Lime


Neurelis, Inc.


Knopp Biosciences and Biohaven Labs


Knopp Biosciences and Areteia Therapeutics


Generian Pharmaceuticals, Inc.


Crystalplex


Work highlights


  • Represented Novity in its license of patents and other technologies when it spun-out of PARC.
  • Representing Halma in managing and establishing many of the IP assets including patents related to the medical device industry.
  • Representing STATS in managing their patent portfolio.

Fenwick & West LLP

Fenwick & West LLP, a team that provides ‘great support’, has a particular focus on the technology aspects of corporate transactions, including M&A, strategic transactions and venture financings. The firm is also vastly experienced in university and research institute licensing, representing numerous top-tier research organizations across the globe on patent licensing issues, alongside handling portfolio management, for both domestic and international clients, including global leading technology companies. Co-lead Jennifer Stanley counsels machine learning specialists and advises on game matters, among other issues, while her fellow co-lead Jonathan Millard counsels large clients such as KX Technologies on strategic transformational projects, handling deals for clients such as Amazon, with both attorneys based in the firm’s San Francisco office. David Hayes, who is based in Silicon Valley, has particular expertise in the space of copyright protections.

Practice head(s):

Jennifer Stanley; Jonathan Millard


Other key lawyers:

David Hayes


Testimonials

‘We are an organization that prides itself on our diverse team, we have been able to have that same diversity in our legal team.’

‘Fenwick has been able to assist us quickly with a broad spectrum of legal topics.’

‘All individuals have provided great support.’

Key clients

Amazon.com


AppLovin Corporation


Bill


Cisco Systems


Coinbase Global Inc.


Etsy, Inc.


Goldstar Events


Instacart


OpenAI


OSIsoft, LLC


Peloton Interactive, Inc.


Securonix


Twilio


Universe


Vocera Communications


Yuga Labs


Goodwin

Standing out for its expertise in negotiating and executing complex transactions, Goodwin is a top destination for blue chip clients in the technology and life sciences industry. The firm is renowned for its vast experience enabling firms in the procurement and enforcement of patent rights and often receives high-profile licensing and collaboration mandates from both domestic and international clients. The practice is co-led by Boston’s Catherine McCarty who has specialist knowledge of pharmaceutical and chemical products, and James Riley, who leads the team from Silicon Valley with a unique understanding of technology acquisition and licensing. The team benefits from Steve Charkoudian’s extensive technology expertise and Kingsley Taft  deep knowledge of the domestic biotechnology market, both of whom are based in Boston. Noelle Dubiansky, who is based in the firm’s Washington DC office, is another name to note.

Practice head(s):

Catherine McCarty; James Riley


Other key lawyers:

Steve Charkoudian; Kingsley Taft; Noelle Dubiansky


Key clients

Alnylam Pharmaceuticals


Code42


BridgeBio Pharma


HIBio


SpringWorks Therapeutics, Inc.


Jemincare


Triumvira


Uncork Capital


Q32 Bio


iRobot


Blueprint Medicines


Nimbus Therapeutics


STALICLA


Lacerta Therapeutics


Ori Systems, Inc.


Medipost Co.


Forma Therapeutics, Holdings Inc.


Sichuan Kelun-Biotech Biopharmaceutical


Triastek, Inc.


Workato


Work highlights


  • Advised Alnylam Pharmaceuticals in its license and collaboration agreement with PeptiDream to discover and develop peptide-siRNA conjugates to create multiple opportunities to deliver RNAi therapeutics to tissues outside the liver.
  • Advised HIBio on its equity participation agreement and license agreements with MorphoSys AG.
  • Advised iRobot Corporation on a number of strategic licensing and patent matters in connection with its definitive agreement to be acquired by Amazon.com, Inc.

Jones Day

Jones Day handles licenses in the earliest stages of development through to the product’s distribution and commercialization. Key areas of work for the firm include life sciences, involving pharma, biotech and medical device work, alongside technology, involving software, fintech and digital asset work, with some transactions focusing on artificial intelligence and machine learning technology. Strategic transactions regarding new technologies are a notable expertise of the firm. Ka-On Li is active in the firm’s Silicon Valley office, representing clients in a number of sectors, such as technology, medical, fintech and media, on their licensing transactions. Also active in Silicon Valley is Joseph Melnik, who is experienced in licensing and commercialization of intellectual property and technology. New York’s Warren Nachlis covers a range of matters including joint development agreements and technology issues.

Practice head(s):

Ka-on Li; Christian Fulda


Other key lawyers:

Warren Nachlis; Joseph Melnik; Thomas Briggs


Key clients

Astellas Pharma Inc.


DraftKings Inc.


Cardinal Health, Inc.


Asbury Automotive Group, Inc.


City of Hope


Eastman Chemical Company


Hard Rock International


Ascension


Glennis Solutions


General Electric


Work highlights


  • Advised Astellas Pharma and its affiliate Mitobridge with a collaboration and exclusive license agreement with Generian Pharmaceuticals to discover and develop novel small molecules for undruggable therapeutic targets.
  • Advised DraftKings with a landmark licensing agreement with the NFL Players Association for the rights to use the name, image, and likeness of NFL players for gamified NFTs (non-fungible tokens).
  • Advised Cardinal Health with its strategic partnership with Ember Technologies to offer the world’s first self-refrigerated, cloud-based shipping box.

Latham & Watkins LLP

Latham & Watkins LLP’s global practice is a key destination for life sciences and tech-related IP licensing matters. The solid team handles a broad range of highly complex IP transactions, from cross-licensing and joint development agreements to due diligence and expert review relating to the licensing of IP assets in public offerings and M&A. The practice is spearheaded by California’s Judith Hasko, an expert at negotiating, structuring, and executing cross-border strategic licensing alliances. She is supported by Christopher Hazuka who regularly advises both emerging and established life sciences companies in navigating complex transactions from the Bay Area and San Diego. The team has been strengthened by the recent addition of digital health and food technology expert Jengeun Jekkie Kim, who operates from the firm’s Bay Area office.

Practice head(s):

Judith Hasko


Other key lawyers:

Christopher Hazuka; Jengeun Jekkie Kim


Key clients

Astellas Pharma


STORM Therapeutics


Homology Medicines


TLC Biosciences


Orbital Therapeutics


PrognomIQ


GlaxoSmithKline


Bertis Biosciences


Octagon Therapeutics


Theramex


Resilience


The Cooper Companies


Shockwave Medical


Neumora


Agenus


Work highlights


  • Advised Astellas Pharma subsidiary, Xyphos Biosciences, in a strategic research and license agreement with Go Therapeutics to develop novel antibodies for immuno-oncology.
  • Advised Homology Medicines, a genetic medicines company, in its spinout of manufacturing technologies to form a new company with Oxford Biomedica.
  • Advised TLC BioSciences in a commercialization agreement with Endo International for rights in the United States to TLC599, a proprietary BioSeizer sustained release injectable in Phase 3 development for the treatment of osteoarthritis pain.

Morrison Foerster

Morrison Foerster focuses on patent licensing in regard to three central areas, namely technology, life sciences and financial services, offering subsector specialty groups in key disruptive tech fields. Practice head Aaron Rubin’s practice focuses on advising established and emerging companies in a number of data- and technology-intensive sectors in relation to software and cloud computing licensing, among other issues. Tessa Schwartz advises on a range of strategic transactions and commercial agreements, while William Schwartz is experienced in representing companies in business transactions and counselling with regard to IP issues. Another key name is Justin Haan, with his expertise in cutting-edge technologies. New York’s Anthony Ramirez strengthens the team with particular expertise in regard to digital media and content, among others. Lawyers are in San Francisco unless otherwise stated.


Practice head(s):

Aaron Rubin


Other key lawyers:

Tessa Schwartz; William Schwartz; Justin Haan; Anthony Ramirez


Key clients

Autodesk


BOOK Token


eBay


Gemini Trust


onsemi


Salesforce


SoftBank


Uber Technologies


Unity Software


VMware


Special New Fruit Licensing Ltd


Marrone Bio Innovations, Inc.


CSPC Pharmaceutical Group Limited


Unity Technologies


Work highlights


  • Advised Unity in connection with its approximately $4.4 billion acquisition of ironSource.
  • Represented SoftBank Group Corp. and SoftBank Vision Fund in the proposed $65 billion sale of UK-headquartered multinational semiconductor and software design company Arm Limited to U.S. chip company NVIDIA.

Orrick, Herrington & Sutcliffe LLP

Orrick, Herrington & Sutcliffe LLP is well regarded for its comprehensive patent licensing capabilities, regularly handling commercial licensing agreements and strategic intellectual property transactions for high profile life sciences and technology companies across the entire corporate life cycle. The team is led by reputed technology expert Daniel Yost, whose work lies at the intersection of technology transactions and clean energy technology. He leads the firm with Sarah Schaedler, who is known for her ability to execute complex distribution agreements and cross-border collaborations. Both attorneys are based in San Francisco, while New York’s Daniel Forester advises on data licensing and NFTs, alongside working with blockchain and cryptocurrency clients.

Practice head(s):

Daniel Yost; Sarah Schaedler


Other key lawyers:

Daniel Forester


Key clients

Weta Digital


Occidental Petroleum Corp.


Luminar


Fulcrum BioEnergy


Trimble


Turn/River Capital


Shopify


Gap


Mina Foundation


Twist Bioscience


Bayer


Ferring Pharmaceuticals


Volastra Therapeutics


Descartes Labs


Serve Robotics


Work highlights


  • Advised Weta Digital on the IP licensing aspects of the sale of its VFX technology division to Unity Software.
  • Advised Fulcrum BioEnergy on negotiating and drafting a master suite of development, custom engineering and catalyst supply agreements to Fulcrum for purposes of developing Fulcrum’s waste to fuel plants.
  • Advised Luminar Technologies on its merger with Gores Metropoulos, a special purpose acquisition company (SPAC) sponsored by an affiliate of The Gores Group and by an affiliate of Dean Metropoulos of Metropoulos & Co.

Weil, Gotshal & Manges LLP

Weil, Gotshal & Manges LLP handles licensing issues in regard to M&A, private equity, banking & finance and restructuring matters. The firm advises a number of global clients on licensing arrangements, patent acquisitions and other agreements and collaborations. Michael Epstein has more than extensive experience advising technology companies and industry investors on transactions. Charan Sandhu leads the team, with a practice focused on a variety of transactions, such as private equity and M&A, including licensing agreements, while co-head Jeffrey Osterman is vastly experienced in technology-related aspects of transactions. All listed attorneys are based in New York.


Practice head(s):

Charan Sandhu; Jeffrey Osterman


Other key lawyers:

Michael Epstein


Key clients

Advent International


Allego Holding B.V.


American Securities


Avista Capital Partners


Bain Capital Private Equity


Bio-Rad Laboratories, Inc.


Blackstone


Briggs & Stratton Corporation


Brookfield


ChargePoint, Inc.


Churchill Capital Group


Cornell Capital


Eli Lilly and Company


Exide Technologies


Getty Images Inc.


Goldman Sachs


The Gores Group


Halozyme Therapeutics, Inc.


Hologic, Inc.


Iron Mountain Incorporated


L’Oréal USA


Magellan Health, Inc.


Main Event Entertainment, Inc.


Marquee Raine Acquisition Corp.


Maxim Integrated Products, Inc.


MGM Resorts International


Micron Technology, Inc.


MSP Recovery, LLC


NEOGEN Corporation


Northrop Grumman


NPC International Inc.


The Progeria Research Foundation


Providence Equity Partners


PSG


Sanofi


SiriusXM


Skillsoft Corporation


TPG


Trebia Acquisition Corp.


Vonage Holdings Corp.


Work highlights


  • Advised MSP Recovery, LLC on the technology & IP aspects of its $32.6 billion business combination with Lionheart Acquisition Corp. II.
  • Advised Maxim Integrated Products, Inc on the technology and IP aspects of its $27.5 billion sale to Analog Devices, Inc.
  • Advised on Gores Guggenheim, Inc. on the technology and IP aspects of its $20 billion business combination with Polestar Performance AB.

Baker Botts L.L.P.

Baker Botts L.L.P. handles the full spectrum of licensing matters for multi-party transactions, including patent, copyright and trademark license agreements, alongside technology development, acquisition, distribution and outsourcing agreements. The firm also conducts due diligence investigations relating to M&A. The firm regularly acts for Cisco on patent licensing and strategic portfolio development, and also represents Toyota in the development of their hydrogen fuel cell technology for heavy-duty vehicles. Christa Brown-Sanford, who is active in the firm’s Dallas office, has experience of patent licensing in relation to telecommunications, electronics and other technologies, working with notable clients such as Toyota and Cisco. Washington DC’s Luke Pedersen strengthens the team with his expertise in technology-related matters, particularly including technology transfers, licensing and patent portfolio management, as well as emerging technologies. Highly experienced patent trial attorney Robert Scheinfeld, who is based in New York, also co-heads the team.










Practice head(s):

Robert Scheinfeld; Christa Brown-Sanford; Luke Pedersen


Key clients

Cisco Systems, Inc.


Strattam Technologies


Columbia University


Halliburton


Toyota


University of Pennsylvania


Royalty Pharma


Memorial Sloan Kettering Cancer Center


Enghouse Interactive (UK) Ltd. and Vidyo, Inc.


CMC Materials f/k/a Cabot Microelectronics Corporation


FUJIFILM Cellular Dynamics, Inc.


Ericsson


Genentech Inc


Work highlights


  • Served as Cisco’s primary outside counsel for patent licensing, strategic portfolio development, defensive patent analysis, and overall counselling and patent strategy.
  • Advising Royalty Pharma on due diligence reviews of patent portfolios, licensing agreements, sponsored research agreements, etc. and assess the strength and scope of patent protection around a royalty-bearing product prior to the client’s investment or acquisition.
  • Assisting with the development and management of Columbia University’s worldwide patent portfolio.

Kirkland & Ellis LLP

Kirkland & Ellis LLP represents both patent licensors and licensees in patent licensing agreements, with patent portfolio management an area of expertise for the firm, which is also experienced in the negotiation of commercial arrangements implemented alongside patent licensing deals, such as joint development, supply, and technical assistance agreements, and is active on behalf of major companies such as Eli Lilly & Co. Chicago’s Seth Traxler often serves as lead counsel in strategic deals that encompass technology assets or opportunities, alongside other areas of expertise, including in relation to the negotiation of licenses. David MacDonald, based in the New York office, is experienced in the intellectual property, pharma and tech sectors with regard to licensing agreements, among others. Russell Levine, who practices in Chicago, utilizes his trial and appellate practice to handle technology transfer and patent license agreements.

Other key lawyers:

Seth Traxler; David MacDonald; Russell Levine


Key clients

Eli Lilly & Co.


Open Invention Network


Work highlights


  • Advised Eli Lilly (NYS: LLY) in its strategic, multi-year collaboration and patent license agreement with Lycia Therapeutics, a biotechnology company that uses its proprietary lysosomal targeting chimeras (LYTACs) platform to develop first-in-class therapeutics.
  • Advised Eli Lilly (NYS: LLY) in its collaboration and patent license agreement with Kumquat Biosciences, which gives Lilly exclusive access to Kumquat’s technology to discover potential novel oncology therapeutics.
  • Represented Open Invention Network, a joint venture of eight companies (Google, IBM, NEC, Philips, Red Hat, Sony, SUSE, and Toyota) and 3500+ licensing participants from 100+ countries, which is the largest patent non-aggression community and supports the freedom of action with respect to the Linux operating system.

Morgan, Lewis & Bockius LLP

Morgan, Lewis & Bockius LLP is noted for its expertise in patent and technology transactions, specifically matters relating to patents licensing and strategic alliances in the semiconductor, software, and life sciences industry, also offering expertise across including e-commerce, medical devices, fintech, and specialty chemicals. The team further stands out for its strength in handling both domestic and international matters and is a destination for global companies in Japan, China, and India as well as US companies seeking to expand into the Asian market. The  practice is led by Dion Bregman in Silicon Valley whilst Benjamin Pensak oversees matters in both Chicago and San Francisco. Louis Beardell leads the firm’s global intellectual property practice from Philadelphia with a focus on emerging life science companies, specialty chemical companies, and defense sector companies. Princeton’s Alan Leeds heads the firmwide life sciences transaction practice with decades of experience representing emerging and established pharmaceutical companies in complex collaborations.  Silicon Valley-based Rahul Kapoor is noted for his breadth of experience coordinating cross-border technology-licensing deals across Asia.


Practice head(s):

Louis Beardell; Dion Bregman; Alan Leeds; Benjamin Pensak


 


Other key lawyers:

Rahul Kapoor


Testimonials

David Glazer and Alan Leeds are outstanding lawyers – amongst the very best.

Key clients

Merck


Eli Lilly and Co.


Takeda Pharmaceutical Co.


GlaxoSmithKline


Regeneron


Affini-T Therapeutics, Inc.


Acrivon Therapeutics, Inc.


Xperi Corporation


Western Digital (SanDisk)


SpotOn Transact


Samsung


Work highlights


  • Assisted Xperi Corporation with the technology and IP aspects of splitting this public company into two public companies—a product company and an IP licensing company.
  • Represented Merck in its collaboration agreement with Orna Therapeutics.
  • Represented Takeda Pharmaceutical Co. in its collaboration agreement with Code Biotherapeutics Inc to design and develop gene therapies for rare-disease indications.

Ropes & Gray LLP

Ropes & Gray LLP‘s ‘collaborative and knowledgeable’ team is renowned for its involvement in high-profile licensing and collaboration deals, including data transactions, brand licensing and other strategic commercial transactions. The group boasts a deep substantive and procedural knowledge of international patent regimes, having represented clients in proceedings before both the US and the European Patent Office. Retail and consumer-oriented businesses are a key focus for the firm with regular work executing strategic acquisitions through IP transactions, licensing, and other commercial contracts. The team is jointly led by Boston’s Melissa Rones who is a top choice for international clients in the financial services and international life sciences industry, and Silicon Valley’s Megan Baca whose expertise lies in innovative digital health transactions. David McIntosh, who is active in the Boston office, complements the team with vast experience leading and negotiating complex cross-border life science collaboration and licensing deals. Boston's Hannah England is experienced in advising clients in the life sciences industry on a range of strategic transactions.










Practice head(s):

Melissa Rones; Megan Baca


Other key lawyers:

David McIntosh; Hannah England


Testimonials

‘In my experience the team has been extremely collaborative and knowledgeable about industry regulation and how we can approach business while remaining compliant.’

Key clients

Pfizer


TPG Capital


Immunogen


Genesis Therapeutics


Blueprint Medicines


Kiniksa Pharmaceuticals


Welsh Carson Anderson & Stowe


Atomwise


Blackstone


Maverick Capital


Work highlights


  • Represented ImmunoGen, a leader in the field of antibody-drug conjugates for the treatment of cancer, inits $1.7bn global, multi-year licensing agreement that granted Eli Lilly and Company exclusive rights to research, develop and commercialize ADCs to disease targets selected by Lilly based on ImmunoGen’s novel camptothecin drug technology.
  • Represented Genesis Therapeutics, Inc. in a $670 million license, research and collaboration agreement with Eli Lilly and Company.
  • Advised Pfizer on IP issues in connection with many leading transactions in 2022.

Cleary Gottlieb Steen & Hamilton

Cleary Gottlieb Steen & Hamilton advises an impressive roster of clients, including Google, 3M and Sony, in relation to the challenges of protecting and monetizing patent rights, as well as handling licensing agreements. Notably, the firm has represented Sony in patent matters involved in its $3.6bn acquisition of Bungie Inc. Daniel Ilan, who has significant experience in representing multinational corporations and private equity firms, particularly in regard to the acquisition of or investment in technology, jointly leads the practice alongside David Herrington, whose expertise lies in handling disputes, as well as counselling licensing transactions and the sale of patent portfolios. Both attorneys are based in New York. New addition to the firm’s California office, Marcela Robledo, who joined from Baker McKenzie in June 2022, focuses on patent licensing primarily within the technology sector.

Practice head(s):

Daniel Ilan; David Herrington


Other key lawyers:

Marcela Robledo


Key clients

3M


Alphabet/Google


ArcelorMittal


Global Healthcare Exchange


International Flavors & Fragrances


MSD Animal Health


OpenText


Sony


Warburg Pincus


Voya Financial


Suzano S.A.


H. Lundbeck A/S


GSK


Global Foundries


Ontex Group NV


Vale


dMY Technology Group


Medytox


BHP Billiton


Work highlights


  • Advised Google in patent matters in connection with its acquisition of CyArx Technologies, Ltd. (Siemplify). Siemplify as a security orchestration, automation, and response (SOAR) organization.
  • Represented Sony Interactive Entertainment LLC in patent matters in connection with its $3.6 billion acquisition of Bungie Inc.
  • Represented GSK in patent matters in connection with its acquisition of Sierra Oncology for an approximately $1.9 billion.

Dickinson Wright PLLC

Dickinson Wright PLLC handles traditional patent licensing, software licensing, cross-licensing to resolve disputes, and technology licensing for universities. The team’s work includes the full spectrum of patent licensing matters, including product development, protection and licensing-out, complemented by substantial industry and business experience in this practice area. Richard Jones, who has considerable experience in negotiating patent license agreements and resolving intellectual property disputes, leads the team from the firm’s Troy office, often working for high-profile clients on issues such as customer and competitor patent portfolios and worldwide licensing strategies. Strengthening the team is Austin’s Lance Anderson, whose expertise includes technology M&A, patent prosecution and due diligence for licensing and acquisitions, among others. Steven Daniels, who is also based in Austin, focuses on disputes, addressing patent infringements as well as strategic counseling on patent portfolio evaluation.

Practice head(s):

Richard Jones


Other key lawyers:

Lance Anderson; Steven Daniels; Andrea Arndt; Stephen Mason


Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Finnegan, Henderson, Farabow, Garrett & Dunner LLP is a full-service intellectual property firm, representing clients in advertising, patents and trademarks and portfolio management. It has a wide variety of expertise, such as within biopharmaceutical, biotechnology and food and beverage industries. In an example of the firm’s portfolio analysis work, it assisted Genevant Sciences with agreements relating to the licensing out of their technology for the development of COVID vaccines. Anand K. Sharma chairs the practice, while Brian Kacedon handles licensing negotiations and drafts licensing agreements, working with pharmaceutical companies of varying sizes, with experience of setting up and directing international patent licensing programs. David K. Mroz practices all aspects of patent law in a wide spectrum of technologies, and Michele C. Bosch handles portfolio management and analysis, among other issues. All listed attorneys are based in Washington DC.


Practice head(s):

Erika H. Arner; Anand K. Sharma; Brian Kacedon


Other key lawyers:

Michele C. Bosch; David K. Mroz


Testimonials

‘Practical, quality licensing counsel.’

‘Brian Kacedon is reliable, practical and smart.’

‘Finnegan’s IP licensing team has the wisdom of experience in licensing IP in many fields and across many territories. Their steady hand has enabled our team to create template agreements that accelerate time to close with multiple licenses, while anticipating reasonable negotiating positions.’

‘Brian Kacedon is the most experienced IP transaction attorney I have worked with over my career of over 14 years in IP licensing and portfolio growth.’

Key clients

Asetek Danmark A/S


Bausch Health Companies Inc.


BrainScope Company, Inc.


Coupang Corporation


CSL Limited


Eisai Co., Ltd.


Genevant Sciences GmbH


Intellia Therapeutics


ONWARD Medical


Plant Tap, LLC


Work highlights


  • Advised Genevant Sciences on several agreements where they licensed out their technology for various uses including development of COVID vaccines.
  • Advised Intellia Therapeutics on IP issues relating to its acquisition of biotechnology startup Rewrite Therapeutics, Inc.

Knobbe Martens Olson & Bear LLP

Knobbe Martens Olson & Bear LLP, a ‘professional’ team with ‘strong cross-functional knowledge’, fields a large team of experts in the licensing and transactional field with frequent involvement acting in high stake transactions on behalf of global clients. The team works across several industries from nanotech and personalized medicine to sports, fashion, and media, with the negotiation of patent licenses, patent assignments, and material transfer agreements all part of the firm’s regular work. Salima Merani is vastly experienced in conducting patent due diligence for investors, while Sabing Lee bolsters the team with her expertise in a wide range of technologies, with particular emphasis on medical devices and procedures and materials science. Jason Gersting concentrates on the biotech and life science industries. The three practice heads are based in the firm’s Irvine office.

Practice head(s):

Salima Merani; Sabing Lee; Jason Gersting


Other key lawyers:

Kimberly Miller; Terry Tullis


Testimonials

‘They have strong cross-functional knowledge in a variety of scientific fields. They give really practical advice and are not afraid to review drawings directly if most efficient. They are hands on!’

‘They have adapted to our working style to serve us better.’

‘Professional outfit with excellent domain knowledge.’

‘Salima Merani and Jason Gersting are stand-out attorneys. Great leaders and great at problem solving. Good communicators and personable.’

‘Kimberly Miller has amazing breadth of experience from licensing to drafting, prosecution, and IP strategy. Extremely happy with all aspects of the service and advice we’ve received.’

‘Salima Merani is amazing at structuring IP licensing agreements for her clients. She was dedicated, patient, and an ardent advocate of our requests. Above all, she found ways around constraints imposed by the other party to make sure we were getting a great long-term licensing agreement. I can’t think of any IP attorney who can compare to Salima.’

Key clients

Personal Genome Diagnostics Inc. (PGDx)


ICU Medical, Inc.


Nkarta, Inc.


Agilent Technologies, Inc.


Illumina, Inc.


Ulthera, Inc.


Vensana Capital Management, LLC


Cala Health, Inc.


CyDex Pharmaceuticals, Inc.


Aligos Therapeutics, Inc.


Work highlights


  • Advised PGDx on IP litigation and strategy.
  • Advised Vensana on IP matters since its formation.