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  1. Capabilities

IP Licensing & Due Diligence

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  • Overview
  • Experience
  • Related Insights & News
  • Key Contacts

    Becky Troutman
    View Our Full Team

    We routinely help clients protect and commercialize their intellectual property (IP) assets and provide due diligence on complex technology and IP transactions. We negotiate and draft IP licenses and transfers; provide strategic guidance on optimal structures for IP and IT transactions; and evaluate copyright, trademark, and patent portfolios and provide related due diligence activities in connection with IPOs, mergers and acquisitions, private equity investments, licenses, and other corporate transactions.

    We provide strategic guidance on the full spectrum of IP and IT agreements, including:

    • IP-driven joint ventures and strategic alliances
    • Asset transfers
    • Research, development, and cooperation agreements
    • Software, Software as a Service, cloud service, and other IT service agreements
    • Consulting agreements
    • e-Commerce agreements
    • Service and supply agreements
    • University research agreements
    • Clinical trial agreements

    We also provide risk management counseling in connection with open source software agreements. Our team focuses on licensing, copyright, and other IP matters and includes attorneys with technical backgrounds and practical experience in computer programming.

    Key Contacts

    Becky Troutman
    View Our Full Team

    We have extensive experience assisting clients across a wide variety of industries in connection with IT sourcing transactions. We collaborate with our clients during the structuring and negotiation of their sourcing relationships in order to develop a customized and flexible contract structure designed to meet their objectives and then adapt as those objectives evolve. We work hard to understand our clients’ business priorities, corporate structure and culture, internal capabilities, and the overarching IT strategic plan or initiative. We draw upon the extensive experience of other practice areas within the firm, including labor and employment, litigation, privacy and data security, and tax, as appropriate.

    We regularly conduct due diligence investigations related to IP assets for joint ventures, mergers and acquisitions, and other transactions. We work with the client to determine the appropriate scope of diligence review and analyze the target’s IP and related agreements to determine what the client will obtain and to evaluate associated risk. We negotiate IP-related provisions of merger and stock and asset purchase agreements, as well as transition services, IP assignments, licenses, and other ancillary agreements. When IP is collateralized, we negotiate the IP provisions of security and credit agreements and handle perfection and release of security interests in intangibles, including recordation of appropriate documents in the states, U.S. Patent and Trademark Office, and U.S. Copyright Office.

    The strength of our dealmakers and the technical know-how of our IP lawyers, backed by the power of our litigation practice, have proven to be a successful combination for our licensing clients. Our attorneys build value through the licensing of IP assets, delivering strategic advice tailored to each individual contract, and addressing relevant domestic and international issues quickly and efficiently.

    Related Capabilities

    Intellectual Property
    Privacy & Data Security
    Patent Litigation
    Trademark Litigation, Prosecution & Brand Protection
    Trade Secrets, Non Competes & Restrictive Covenants
    Copyright-Infringement Litigation
    Mergers & Acquisitions
    ITC – Section 337
    Labor & Employment
    Tax
    Technology, Media & Telecommunications

    Recent Experience

    GenNx360's Majority Investment in Whitsons Culinary Group
    The Care Team's Acquisition of InTeliCare Home Health and Hospice

    Notable

    Becky Troutman Recognized as Leading Dealmaker in America

    Lawdragon 500 2022 

    100+ IP Attorneys

    Lawdragon 500 2022 

    Becky Troutman Recognized as Leading Dealmaker in America

    100+ IP Attorneys

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    Winston Recognized in 2021 IAM Patent 1000 Rankings

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    Blog
    Initiating an Informal Dispute on Amazon's Platform was Sufficient to Subject a Patentee to Personal Jurisdiction in Accused Infringer’s Home State!
    May 7, 2024
    Recognitions
    Winston & Strawn Trademark Team Recognized in the WTR 1000 2024 Rankings
    February 6, 2024
    News
    Robert Kang Selected as a 2023 Federal Circuit Bar Association Global Fellow
    January 10, 2023
    Blog
    Federal Circuit Limits Use of “Admitted Prior Art” in IPR Proceedings
    March 15, 2022
    Blog
    Ubisoft is First Major Gaming Company to Embrace In-game NFTs: What Does This Mean for the Industry?
    January 10, 2022
    Blog
    Patents Joining the Hot NFT Market?
    November 3, 2021
    Blog
    NFTs and Their Role in the “Metaverse”
    November 2, 2021
    Blog
    Steam Bans NFT and Cryptocurrency Games: Implications and Ramifications for the Videogame Industry
    November 1, 2021
    Blog
    How NFTs Will Impact Ownership of Virtual Items in Videogames
    October 18, 2021
    Recognitions
    Winston Recognized in 2021 IAM Patent 1000 Rankings
    August 24, 2021
    Recognitions
    Winston Attorneys & Practices Recommended in 2018 Managing Intellectual Property
    July 31, 2018
    Article
    Disputes Over Venue in Patent Litigation
    April 1, 2018
    View All Insights & News
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