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Intellectual Property Transactions

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Licensing agreements, IP prosecutions and other intellectual property transactions have grown in complexity and sophistication. These deals and protections create the context and resources to expand opportunities and can turn competitors into partners and collaborators. GRSM leverages transactions to help clients audit, develop, commercialize, protect and transfer intellectual property assets. Our clients include large public companies, non-profit organizations, investors, inventors and startups in technology, life sciences, financial services and more.

GRSM’s deal counsel is backed by a deep bench of IP litigators and advisors, including patent attorneys and authorities on trademark, copyright, and trade secret protections.

License transfers and agreements are a focal point for our team, who advise on:

  • Exclusivity, scope, term, territory, indemnities and other licensing provisions
  • Licensing-related IP portfolio considerations involved in mergers and acquisitions
  • Negotiation of milestone structures for royalty payments
  • Collaboration agreements in jointly owned/created assets

Additionally, our prosecution practice is robust. We handle the application and registration/issuance process for patents and trademarks at the USPTO and state (and foreign) trademark offices, copyrights at the Copyright Office, and trade secret protection within a company.

Our 50 state, full-service platform offers extensive local and international experience in copyright, patent, trademark and trade secret law, as well as in IP enforcement and prosecution.

We manage trademark portfolios worldwide. To help clients maximize the value of licenses and IP assets, we offer comprehensive IP audits and advise on competitive, defensive, global and long-term strategies.

From conducting due diligence for acquisitions or disposition to structuring agreements for cross-border tech transfers, GRSM provides comprehensive counsel to support important opportunities and clients’ IP portfolios. Our in-depth transactional counsel includes:

  • Technology and IP transfers
  • IP prosecutions
  • NDAs and data and information exchanges
  • M&A IP due diligence
  • Licensing and license expansions
  • Partnership agreements and joint ventures
  • In-licensing and out-licensing
  • Deals with distressed companies
  • Tech and product development agreements
  • Sponsored research and clinical trial agreements

Our clients’ IP portfolios are global, and our 50 state platform extends worldwide through professional networks focused on IP rights wherever issues or opportunities arise. For example, GRSM attorneys negotiated and structured the granting of a multimillion-dollar, freedom to operate (FTO) license to one of the world’s largest pharmaceutical companies. We also implemented the commercialization strategy for a blockchain invention that facilitates GDPR data compliance.