Technology Transfer & Complex Licensing

Alston & Bird has extensive experience working with technology transfer offices, including those affiliated with universities and research institutions. We regularly handle matters regarding, among other things, health care (e.g., heart monitoring and probes for detecting viruses), electro-optical imaging systems, complementary field effect transistors, fiber optics, holograms and machine vision systems. Our assistance has included securing patent protection, licensing patents and technology, and resolving disputes (and therefore avoiding litigation) in these fields. 

On a regular basis, our attorneys draft and negotiate complex licensing transactions. While these transactions typically involve the licensing of computer software, and may include software and systems migration and integration services, as well as maintenance and support services, they often are more complex, as they are directed to the transfer of a client’s technology platform from one vendor or platform provider to another vendor or platform provider. Intellectual property and technology are always the driving forces in these complex transactions. Our attorneys often lead a diverse team of lawyers and business persons in the drafting, negotiation and consummation of complex software and systems development agreements, master license agreements, implementation and migration service agreements, transition services agreements, and maintenance and support services agreements, taking these complex transactions from their early stages to closing. 

Finally, our attorneys frequently serve as leading members on client teams that handle mergers, acquisitions, divestitures, joint ventures and other strategic alliances. These transactions frequently involve extensive intellectual property and technology due diligence, audits and investigations, and significant intellectual property and technology rights ownership issues, as well as the transfer and licensing of significant intellectual property and technology rights, and our clients depend on our expertise in handling these complex matters.