Our Tech Transfer Practice

Moving technology from research settings to the marketplace involves navigating complex legal relationships that protect everyone’s interests while enabling innovation to flourish. We provide legal guidance for entrepreneurs, startups, and established companies looking to commercialize technology developed by research institutions, addressing the various aspects of technology transfer from licensing structures and collaborations to implementation strategies.

Technology transfer often falls into a specialized corner of legal practice that many firms don’t regularly handle. This has led other law firms in our area to refer their clients to us for technology transfer matters when these needs arise. Our work spans various industries, with particular depth in biotechnology, life sciences, and computer and internet technologies.

Licensing Agreements

Licensing forms the foundation of most technology transfers. We draft, negotiate, and review licensing agreements with attention to both current needs and future possibilities. Many clients find that carefully structured agreements at the outset prevent significant complications later in the commercialization process.

Joint Ventures and Collaborations

When technology transfer requires more involved structures, joint ventures and collaborative arrangements often provide the right framework. We help document research partnerships and development collaborations in ways that facilitate clear ownership, appropriate risk allocation, and successful commercialization paths.

IP Strategy and Protection

At its core, technology transfer depends on well-defined intellectual property rights. We work with clients to develop intellectual property approaches that protect innovations while enabling practical commercialization. This often involves coordinating different types of IP protection to create comprehensive coverage for valuable technologies.

Commercialization Planning

Moving from laboratory to marketplace involves numerous legal considerations. We advise on both legal and practical aspects of bringing technology to market, including regulatory requirements, market entry approaches, and structuring relationships with manufacturing or distribution partners.

Dispute Resolution

When disagreements arise during technology transfer processes, having representation familiar with both the legal framework and technical subject matter makes a meaningful difference. We work with clients to address disputes while keeping the focus on the underlying commercialization goals.

Our Practice Areas

All Practice Areas

Frequently Asked Questions

What exactly is technology transfer, and what legal frameworks govern it?

Technology transfer encompasses the formal transfer of rights in intellectual property from research institutions to commercial entities. This process is governed by multiple legal frameworks, including the Bayh-Dole Act for federally funded research, institutional policies, and state laws governing public institutions. The legal structure creates a bridge between academic discovery and commercial development while protecting the interests of all stakeholders.

How does the Bayh-Dole Act affect university research commercialization?

The Bayh-Dole Act grants universities the right to retain ownership of inventions created through federally funded research, while imposing specific obligations including prompt disclosure of inventions, patent filing requirements, and preferences for U.S. manufacturing. The government retains certain rights, including march-in rights under specific circumstances.

What are the key components of a technology transfer agreement?

A comprehensive technology transfer agreement must address ownership rights, scope of license (exclusive vs. non-exclusive), field of use restrictions, territorial limitations, compensation structure, performance milestones, improvement rights, and termination conditions. The agreement should also specify responsibilities for patent prosecution and enforcement.

How can royalties be structured in tech transfer agreements?

Royalty structures usually combine upfront payments, milestone payments, and running royalties based on commercial success. The specific terms often depend on factors like development stage, market potential, and exclusivity rights. Additional considerations may include minimum royalty requirements and anti-stacking provisions for complex products requiring multiple licenses.

What rights do faculty inventors typically retain?

Faculty inventors generally retain rights to continue using their inventions for research and educational purposes, even after commercial licensing. However, the specific scope of these retained rights varies by institution and should be clearly defined in both institutional policies and licensing agreements.